America Invents Timeline

The Leahy-Smith America Invents Act marks the most significant change to the U.S. patent system in more than 50 years. This patent reform act comprises 37 provisions, with progressive enactment dates.

Use The Interactive Timeline To Learn About The Provisions.

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Pro Bono program

Authorizes the establishment of pro bono programs to assist financially under-resourced independent inventors and small businesses.

Inter Partes Reexamination transition for threshold

Elevates threshold for initiating inter partes reexamination from "substantial new question of patentability" to "reasonable likelihood that the requestor will prevail with respect to at least one of the claims challenged."

Tax strategies are deemed within the prior art

Renders tax strategies unpatentable by deeming them to be in the prior art.

Best mode

Prohibits using a failure to disclose the best mode as a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.

Human organism prohibition

Bars claims "directed to or encompassing a human organism."

Virtual and false marking

Virtual marking allows patentees to mark their products with the word "patent" or "pat." plus an Internet address where the patent number is associated with the product. False marking lawsuits have been limited to the US government or those who suffer a competitive injury.

Venue change from DDC to EDVA

Moves venue for civil actions appealing various decisions of the PTO, BPAI and TTAB from the District Court in Washington, D.C. to the Eastern District of Virginia.

OED statute of limitations

Requires that an OED proceeding be brought by the earlier of (a) 10 years from the date of the alleged misconduct; or (b) 1 year from the date the alleged misconduct is "made known to an officer or employee of the Office."

Fee setting authority

Authorizes the USPTO to set or adjust USPTO fees without Congressional approval.

Establishment of micro-entity

Creates a new category of applicant, micro entities, which are entitled to a 75% reduction in fees.

Prioritized examination

Creates a prioritized examination track, available for a $4,800 surcharge on regular filing fees.

15% transition surcharge

Increases existing USPTO fees by 15%.

Reserve fund

Establishes a USPTO Fee Reserve Fund in the Treasury to collect amounts in excess of the PTO's appropriations.

Electronic filing incentive

Provides an incentive to file applications electronically by applying a $400 surcharge to paper submissions.

International protection for small businesses report

Examines how the USPTO, in coordination with other federal agencies, can help small businesses with international patent protection, including a revolving fund loan or grant program to defray costs.

Prior user rights report

Examines the operation of prior user rights in other industrialized countries.

Diversity of applicants program established

Requires the USPTO to establish methods for studying the diversity of patent applicants.

Genetic testing report

Evaluates effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist.

Inventor's oath or declaration

Allows the assignee of an invention (from the inventor) to file a patent application.

Third party submission of prior art in a patent application

Allows third parties to assert prior art against an application.

Supplemental examination

Enables patentees to request that the USPTO consider, reconsider or correct information relevant to patentability.

Citation of prior art in a patent file

Allows any person to cite prior art to the USPTO if they believe the art has a bearing on the patentability of any claim of a patent. Also, any person can cite statements made by a patent owner in federal court that highlight the patent owner's position on the scope of any claim.

Priority examination for important technologies

Authorizes the USPTO to grant prioritized examination to patent applications directed to "products, processes, or technologies that are important to the national economy or national competitiveness."

Inter partes review

Reforms the existing inter partes reexamination process into a new inter partes review process.

Post-grant review

Allows third parties to challenge the validity of a patent on virtually any ground within the first nine months after a patent issues or reissues.

Transitional program for covered business method patents

Requires the USPTO to establish an 8-year transitional program to review certain covered business-method patents in light of the Supreme Court's recent decision in Bilski v. Kappos.

Patent ombudsman for small businesses program established

Requires the USPTO to establish a Patent Ombudsman Program to provide support and services to small businesses and independent inventors.

Effects of first-inventor-to-file on small business report

Examines the effects of small businesses switching to a first-inventor-to-file system.

Patent litigation report

Examines the impact of patent infringement litigation by non-practicing entities.

First-inventor-to-file

Transitions the U.S. to a first-to-file patent system while maintaining a 1-year grace period for invention disclosures.

Derivation proceedings

Replacing current interference proceedings, derivation proceedings determine whether the invention in one patent was derived from the work claimed in another later-filed patent or application.

Repeal of statutory invention registration

Statutory Invention Registration has been repealed.

Report on misconduct before the office report

Evaluates the impact of new statute of limitations provisions barring disciplinary action in response to substantial evidence of misconduct before the Office.

Open satellite offices

Requires the USPTO to establish three or more satellite offices in the United States.

Virtual marking report

Evaluates the effectiveness of the virtual marking as an alternative to physical marking articles.

Satellite offices report

Provides the rationale for selecting the location of satellite offices, progress in establishment and achieving identified purposes.

AIA implementation report

Assesses the implementation of AIA and its effect on innovation, competitiveness and small business access to capital.