On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) provisions. This article provides an overview of the substantive changes to the AIA embodied in this law.
Technical Corrections to the AIA
Changes Relating to Patent Prosecution
Changes Relating to Patent Trials
Patent Term Adjustment
Most of the other substantive changes in HR 6621 relate to Patent Term Adjustment. I wrote about these changes in this article, and will not repeat myself here. However, I will emphasize that patent holders who did not timely file a Request for Reconsideration of the USPTO’s PTA award with the USPTO but want to bring a civil action for additional PTA within 180 days of the patent’s issue date may need to argue that the changes to 35 USC § 154(b)(4)(A) should not be applied retroactively. By operation of the default effective date of HR 6621, those changes would apply to “proceedings commenced on or after [the] date of enactment,” and could be read as requiring the patent holder to have timely filed a Request for Reconsideration with the USPTO before challenging the USPTO’s determination in a civil action.