17 January 2013Patents

Obama scraps ‘dead zone’ in AIA amendments

US President Barack Obama signed a bill to update the Leahy-Smith America Invents Act (AIA) on Monday.

The AIA is the most significant change to US patent law in 60 years, notably changing the US patent filing process from a "first-to-invent" to a "first-inventor-to file" system.

The amendments will eliminate the current nine-month ‘dead zone’, during which inter partes review and post-grant review are unavailable for patents filed under the old system.

Before the amendments, the new law provided for inter partes review nine months after patent grant, or after the termination of a post-grant review. But because post grant review is only available for patents that will be filed after March 16, 2013, all patents filed before that date could not be subject to either inter partes or post-grant review for nine months.

Barry Schindler, co-chair of Greenberg Traurig’s patent prosecution practice, said that the amendments to the AIA have some important provisions for inventors, and “close some of the holes” in the original bill.

He said: “In the original AIA, the derivation proceeding replaced interferences and allowed an applicant to allege that another applicant ‘derived’ the invention from the correct inventor. The original deadline for filing this type of proceeding was one year after the ‘victim’s’ claims are published.

“Thus, a ‘deriver’ could avoid a derivation proceeding by waiting until expiration of the deadline before amending the application with a claim directed to the derived invention. The amendments to the AIA changed the deadline for filing a derivation proceeding to one year after the deriver's claim is publicly available (i.e., an amendment filed that recites the ‘deriver’s claims) and thus closes this loophole.”

Before passing the bill, the Senate removed a provision that required the USPTO to report to Congress on how many patent applications are pending.

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More on this story

Jurisdiction reports
1 December 2012   On September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act (AIA).
Patents
1 December 2011   The AIA was enacted on September 16, 2011, creating new proceedings for challenging patents at the USPTO. Eldora Ellison and Deborah Sterling discuss the predominant post-assurance proceedings that are (or will become) available.