Modifications to the America Invents Act of 2011 (H.R. 6621, now Pub. L. 112-274)

1. Modifications to the America Invents Act of 2011 (H.R. 6621, now Pub. L. 112-274) Chris Fildes AIPLA Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting Seminar January 29, 2013

2. Pub. L. 112-274 • Generally, Pub. L. 112-274 provides for corrections and improvements to certain provisions of the America Invent’s Act of 2011 (AIA) • Highlights • Modification of the effective date of new Section 298 • Elimination of post-grant review “dead zone” • Extension of time to file inventor’s oath or declaration • Clarification of timing for filing a derivation proceeding • PTAB provided with authority to conduct interferences • Changes to patent term adjustment • No provision regarding pre-GATT applications

3. Pub. L. 112-274 – Section by Section • Advice of Counsel • New Section 298 of the Patent Law applies to any civil action commenced on or after the date of enactment of Pub. L. 112-274 (January 14, 2013) • Failure of an infringer to obtain advice of counsel or to present evidence of advice of counsel may not be used to prove willful infringement or intention to induce infringement • Clerical corrections to Transitional Program for Covered Business Method Patents, new Section 299 of the Patent Law regarding joinder of parties, new Section 135(e) regarding settlement in derivation proceedings, and new Section 123(a) regarding micro entities

4. Pub. L. 112-274 – Section by Section • Elimination of Post-grant Review Dead Zone • The AIA as enacted only allows for post-grant review for patents issued on applications filed on or after March 16, 2013, and only allows inter partes review for patents that have been issued for at least 9 months (and that are not subject to a pending post-grant review). The AIA also eliminated inter partes reexamination. Thus, for any patent issued on an application filed before March 16, 2013, no inter partes proceeding would be available for the first 9 months of the life of the patent (“dead zone”). • Inter partes review now available at any time for patents having an effective filing date before March 16, 2013

5. Pub. L. 112-274 – Section by Section • Elimination of Dead Zone (continued) • Also, filing date of a petition for inter partes review is no longer dependent upon date of issuance of a reissue patent • Petition for inter partes review now may be filed after the later of (i) the date that is 9 months after the grant of the patent; or (ii) the date of termination of post-grant review of the patent

6. Pub. L. 112-274 – Section by Section • Latest Time for Filing an Oath or Declaration • The AIA provided that the inventor’s oath or declaration must be filed prior to the notice of allowance • Now extended to no later than the date on which the issue fee is paid • Travel Expenses and Payment of Administrative Judges • Section 21 of the AIA (provisions related to travel expenses and payment of administrative patent and trademark judges) now has an effective date of September 16, 2011

7. Pub. L. 112-274 – Section by Section • Patent Term Adjustment • For national stage applications, patent term adjustment calculations now begin on commencement of the national stage under Section 371, rather than on the date on which the international application fulfilled the requirements of Section 371 • USPTO must provide a determination of the patent term adjustment no later than the date of issuance of the patent, rather than with the notice of allowance • An applicant no longer may directly contest a patent term adjustment determination in federal District Court; applicant must first file a request for reconsideration with the USPTO

8. Pub. L. 112-274 – Section by Section • Improper Applicant in PCT Applications • Section 373 of the Patent Law repealed • No longer restricts who may file an international application designating the U.S., and whether such an application is entitled to national stage entry in the U.S. • Financial Management Clarifications • Specifies that all federal patent law fees are available for expenses related to patent processing • Specifies that patent and trademark fees may be used interchangeably to cover proportionate shares of the administrative costs of the USPTO

9. Pub. L. 112-274 – Section by Section • Derivation Proceedings and Interferences • Clarification of amended Section 135(a) of the Patent Law under the AIA pertaining to institution of derivation proceedings • Derivation petition must be filed within one year of publication of an application or grant of a patent containing a claim to the derived invention (within one year of publication of the deriver’s claim to the invention) • Defines “earlier application” • Specifically authorizes the Patent Trial and Appeal Board to conduct, and for the Federal Circuit to hear appeals of, interference proceedings declared after September 15, 2012 under the pre-AIA Section 135 of the Patent Law

10. Pub. L. 112-274 – Section by Section • Public Advisory Committee Members • Terms of PPAC and TPAC (Patent and Trademark Public Advisory Committees) members run for 3 years from a fixed date (rather than from the date of appointment) • Chair and a Vice Chair appointed from among the members of each respective committee • Chair and Vice Chair serve during their 3 year term • If Chair does not complete his or her term or is otherwise unable to exercise the functions of the Chair, then the Vice Chair automatically exercises the functions of the Chair

11. Thanks for your attention! Chris Fildes +1-313-885-1500 fildespat@teleweb.net