AIA Technical Amendment (H.R. 6621) Moving Forward | Patently-O
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`http://patentlyo.com/patent/2012/12/aia-technical-amendment-hr-6621-...
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`December 17, 2012
`By Dennis Crouch
`
`Dennis Crouch
`
`Representative Lamar Smith has put forward an
`amended version of H.R. 6621 (/media/docs/2012
`/12/BILLS-112hr6621-SUS.pdf). The amended bill
`removes the provision that would have crippled the
`value of pending pre-Uruguay Round Agreement Act
`(URAA). In my estimation about 200 of those appli-
`cations filed prior to June 8, 1995 are still in prose-
`cution at the USPTO. That change makes the bill less
`controversial and sets up easy passage in the House
`leadership has set the bill up for a voice vote this
`week, perhaps as early as Tuesday, December 18. At
`this point no opposition to the bill has been raised in
`Congress. To become law, the Senate would need to
`pass the bill before its December recess.
`
`Important changes include the following:
`
`Less Patent Term Adjustment: The current lan-
`guage of Section 154(b) suggests an applicant may
`begin accumulating PTA as of the filing date of an in-
`ternational PCT application that is later followed by
`a US national stage application. The proposed
`amendment would eliminate that option by clarify-
`ing that the PTA calculations only begin “commence-
`ment of the national stage under section 371 in an in-
`ternational application.” The change also provides
`that the PTO calculate PTA with the issuance rather
`than at the notice of allowance. This is obviously
`problematic for some because it blocks patentees
`from clearing-up PTA issues prior to patent issuance.
`See 35 U.S.C. 154(b)(3)(C). This also effectively lim-
`its the timing for administratively challenging PTA
`determinations to a two-month period. In my first
`read through of the Bill, I failed to recognize that the
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`AIA Technical Amendment (H.R. 6621) Moving Forward | Patently-O
`
`http://patentlyo.com/patent/2012/12/aia-technical-amendment-hr-6621-...
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`amendment would require an administrative chal-
`lenge prior to filing a district court challenge. Thus,
`the two-month-from-issuance deadline becomes a
`fairly hard deadline for correcting PTA. The statute
`does not clarify what happens if the USPTO fails to
`decide the PTA challenge prior to the six-month
`deadline for filing a district court case. Courtenay
`Brinkerhoff has a nice post criticizing the provision
`here: http://www.pharmapatentsblog.com/2012/12
`/11/hr-6621-adds-new-roadblocks-to-patent-
`term-adjustment-appeals/.
`
`Post-Grant Dead Zone: Once the AIA is fully im-
`plemented, an issued patent will be immediately
`challengeable through a post-grant review. Then, af-
`ter a nine-month window, challenges will be avail-
`able through inter partes review. However, the AIA
`has bit of an implementation issued because (1)
`post-grant reviews will only be available for patents
`issued on applications filed on or after March 16,
`2013; (2) inter partes reviews are available for all
`patents, but only those that have been issued for at
`least 9-months; and (3) the old inter partes reexami-
`nations are no longer available. This creates some-
`thing of a dead zone in that for the next couple of
`years patents will not be challengeable through any
`inter partes system until 9-months after issuance.
`H.R. 6621 would eliminate that 9-month dead zone
`by allowing inter partes reviews to be filed at any
`time for applications with an effective filing date be-
`fore March 16, 2013.
`
`Delaying Inventor’s Oath: Section 115(f) of the
`AIA indicates that an either (1) an oath, (2) a substi-
`tute statement, or (3) sufficient assignment must be
`submitted prior to the notice of allowance of a patent
`application. The amendment would push that dead-
`line back to be “no later than the date on which the
`issue fee for the patent is paid.”
`
`Sharing Fees Between the Patent and Trade-
`mark Side: The AIA requires that, for the most
`part, fees collected on patents be used to cover “ad-
`ministrative costs of the Office relating to patents”
`while fees collected on the trademark side be used to
`cover “administrative costs of the Office relating to
`trademarks.” H.R. 6621 would eliminate that restric-
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`AIA Technical Amendment (H.R. 6621) Moving Forward | Patently-O
`
`http://patentlyo.com/patent/2012/12/aia-technical-amendment-hr-6621-...
`
`tion and thus allow patent fees to pay for trademark
`operations and vice versa.
`
`Derivation Proceedings: The AIA eliminated the
`ongoing viability of interference proceedings (al-
`though some will be pending for years) but created a
`new beast known as a derivation proceeding. H.R.
`6621 would clean up the language for initiated a
`derivation proceeding under 35 U.S.C. §135(a). I
`need to think some about the language to under-
`stand the substance. I have created a rough mark-up
`of this language. (/media/docs/2012/12/Com-
`pareNewOldDerivation.docx).
`
`Law Professor at the University of Missouri School of
`Law View all posts by Dennis Crouch →
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