Torys on Intellectual Property
IP 2011-4
September 22, 2011
United States Converts to First-to-File Patent System
By Edward Fan and Karen Townsend
On September 16, 2011, the Leahy-Smith America Invents Act (AIA) was signed into
law, implementing the most significant changes to U.S. patent law in more than half a
century. These changes affect many aspects of U.S. patents, including the registration
process for patents, the post-grant review of patents and patent litigation. Although
many of the provisions under the AIA will take effect a year or more from now, some
took effect as soon as the legislation was signed into law and others will go into effect
soon. Below we highlight some of the more significant features of the AIA.1
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Pre-Grant Changes
First to Invent. The AIA changes the U.S. patent system from a first-to-invent system
to a first-to-file system, which is consistent with patent laws of most other countries,
including Canada. Until now, an inventor who was not the first to file for a patent in the
United States could nonetheless challenge a patent application previously made by
others for the same invention through an interference proceeding, on the basis that the
inventor was the first to invent the invention. Under the AIA, interference proceedings
will eventually be phased out and will be replaced with derivation proceedings. In
derivation proceedings, the later inventor to file a patent application on the same
invention can challenge an earlier-filed application only on the basis that the first
inventor “derived” the invention from the second inventor. These changes will become
effective on March 16, 2013, and will relate to applications with an effective filing date on
or after that date.
Prior Art. Along with the change from a first-to-invent to a first-to-file system comes
changes to the way prior art is assessed. Under the AIA, assessment of both novelty and
obviousness of a patent claim will be based on the effective filing date of a claimed
invention, rather than the previously used date of invention. In addition, the AIA
eliminates the ability to “swear behind” independently derived third-party patents and
publications based on an inventor’s earlier invention date. The AIA also removes
territorial limitations that used to be applicable to public uses and sales as bars to
patentability. However, the new law continues to provide a one-year grace period,
allowing for exclusion as prior art any disclosure made one year or less before the
effective filing date by the inventor (or someone who obtained the information directly
or indirectly from the inventor). These changes will become effective on March 16, 2013,
and will relate to applications with an effective filing date on or after that date.
Prioritized Examination. As of September 26, 2011, it will be possible to request
prioritized examination of a patent application. This program of prioritized examination
will allow accelerated examination without requiring the applicant to submit additional
1 The AIA can be accessed here.
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This bulletin is a general
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© 2011 by Torys LLP.
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United States Converts to First-to-File Patent System
Page 2
search or support documentation. A patent undergoing prioritized examination must have a limited number
of claims, and the additional fee for large-entity applicants is currently set at US$4800.
Ineligible Subject Matter. The AIA stipulates that, as of September 16, 2011, tax strategies are deemed
insufficient to distinguish pending patent claims from the prior art (that is, tax strategies are deemed to be
the prior art). Therefore, all pending and future applications directed solely to tax strategies will not be
patentable. In addition, the AIA states that “no patent may issue on a claim directed to or encompassing a
human organism.”
Post-Grant Changes
Supplemental Examination. Beginning September 16, 2012, a new post-issuance proceeding, called
“supplemental examination,” will allow a patentee to correct errors or omissions made during the
registration process of its own patent application. The supplemental examination proceeding will allow the
patentee to present information that was inadequately considered, was not considered at all or is incorrect
and might otherwise lead to an allegation of inequitable conduct.
Post-Grant Review Process. The AIA establishes a new post-grant review process. An interested third
party may request such a review within nine months of the issuance or reissuance of a patent by
demonstrating that it is more likely than not that one or more patent claims are unpatentable. Unlike current
reexamination proceedings, the post-grant review is not limited only to questions of novelty and
obviousness, but can be based on other grounds for invalidating a patent.
Inter Partes Review. The AIA also replaces the current inter partes reexamination procedure with a new
“inter partes review” process. This process can only be requested nine months after the issuance or
reissuance of a patent or after the conclusion of any post-grant review that may have been instituted. As with
the old inter partes reexamination process, the inter partes review can only be brought on grounds of lack of
novelty or obviousness based on patents or printed publications. The standard for being granted an inter
partes review has also changed from requiring a substantial new question of patentability to a showing of
reasonable likelihood of success that the requestor will prevail on at least one of the challenged claims. The
inter partes review proceedings will not begin until September 16, 2012, but the new standard for granting an
inter partes review takes effect immediately in respect of inter partes reexamination.
Transitional Post-Grant Review of Business Method Patents. The AIA creates a special post-grant
review procedure for persons who have been accused of infringing a patent directed to the practice,
administration or management of a financial product or service. Such a person can challenge the asserted
patent(s) at the Patent and Trademark Office in a post-grant review, which can be used as a ground to stay a
civil action. This provision of the AIA will expire eight years after September 16, 2012, unless renewed by
Congress.
Virtual Marking. To comply with marking requirements under the AIA, a patentee may now mark an
article with the word “Patent” or the abbreviation “pat.,” together with an Internet address accessible to the
public free of charge that associates the patented article with the number of the patent.
Litigation Matters
Prior Commercial Use Defense to Infringement. The AIA broadens the prior commercial use defense,
which previously applied only to patented business methods, to now include continued commercial use of
subject matter used in a manufacturing or other commercial process at least one year before the filing or
public disclosure of a claimed invention. The new defense can be used against any patent issued on or after
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