In a last-minute decision for the 112th Congress, the House of
Representatives approved an America Invents Act (AIA)
technical-revisions bill as amended by the Senate (H.R. 6621) on
January 1, 2013. President Obama is expected to sign the bill
without delay. While the bill provides for a number of
non-controversial clerical corrections, it also creates some key
substantive changes. Among those key changes are: 1) the
elimination of "dead zone" periods during which none of
the new post-grant challenge mechanisms would have been available;
and 2) clarification on patent-term adjustment calculations for
national phase applications filed under 35 U.S.C. § 371.
Post-Issuance Review "Dead
Under the AIA's original provisions, post-grant review (PGR)
challenges may be raised only against patents that issue on
applications filed on or after March 16, 2013
("first-to-invent" patents). The new inter
partes review (IPR) procedure replaces the now-defunct
inter partes reexamination process, but may be invoked
only beginning nine months after patent issuance. As a result,
patents that issued on applications filed prior to March 16, 2013,
could avoid a PGR challenge and enjoy a nine-month gap before an
IPR challenge could be initiated. The AIA corrections bill
eliminates this "dead zone" by allowing immediate IPR
challenges to patents that only claim subject matter that was filed
before March 16, 2013.
Similarly, under Section 325(f) of the AIA, PGR is not available
to challenge a reissue patent if the reissued claims are identical
to or narrower than the original claims, and the IPR nine-month
waiting period still applied. H.R. 6621 addresses this "dead
zone" by eliminating the IPR waiting period for these reissue
PTA Calculations for National Phase
The corrections bill also modifies 35 U.S.C. § 154(b) on
Patent Term Adjustments (PTAs) for national phase applications.
Previously, "A" and "B" delay calculations for
U.S. Patent & Trademark Office (PTO) delays could have been
calculated from the filing date of the Patent Cooperation Treaty
(PCT) application. H.R. 6621 requires that these delays be
calculated from the "commencement of the national stage."
The new bill would also grant the U.S. District Court for the
Eastern District of Virginia exclusive jurisdiction over PTA
Inventor's Oath Submission Deadline
Under the original AIA provisions, an inventor's oath or
declaration or similar document had to be submitted before a Notice
of Allowance could be mailed. H.R. 6621 extends the
oath/declaration deadline to the date the issue fee is paid.
Derivation proceedings were initiated under the AIA as a
mechanism to ensure that the first-to-file applicant is actually
the true inventor. H.R. 6621, Section k, provides some additional
detail for derivation proceedings that was lacking in the original
AIA. For example, the corrections bill specifies that a derivation
petition must be filed within one year of the patent application
publication or patent grant, whichever is earlier.
Future Directions and Conclusions
The corrections bill as passed leaves two controversial topics
on the discussion room floor. First, the originally proposed text
contained a provision to eliminate the 17-year patent term option
for any pending pre-GATT applications that had not issued within
one year of the bill's enactment. During congressional
hearings, this option was watered down to a requirement that the
PTO prepares a report on the number of pending pre-GATT
applications, but ultimately the provision was deleted.
A second key issue that awaits resolution is the PGR estoppel
effect under AIA Section 325(d), which estops a PGR challenger from
further civil litigation "on any ground that the petitioner
raised or reasonably could have raised" during the PGR
process. While the "reasonably could have raised" prong
had been applied to subsequent PTO proceedings, it had not been
applied to civil litigation at any point during the AIA's
six-year migration, and appears to have been added in error during
reporting to the House Judiciary Committee. While Congress was
unable to come to an agreement as to whether to delete this phrase
via H.R. 6621, the issue will likely be resolved in the next
Because of the generality of this update, the information
provided herein may not be applicable in all situations and should
not be acted upon without specific legal advice based on particular
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Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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