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`New Bill Proposing Corrections to
`the America Invents Act
`
`December 14, 2012
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`America Invents Act
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`On November 30, 2012, Representative Lamar
`Smith (R-Texas) introduced a bill “[t]o correct
`and improve certain provisions of the
`Leahy-Smith America Invents Act [‘AIA’] and title
`35, United States Code.” H.R. 6621. The bill not
`only corrects several minor errors, but also
`proposes a few important changes to the AIA
`and other provisions of the Patent Act. This
`update discusses several of those important
`changes, including provisions that would impact
`the timing of the new inter partes proceedings,
`curb the term of pending pre-GATT patent
`applications, and modify aspects of patent term
`adjustment (“PTA”).
`
`Eliminating the Inter Partes Proceeding
`“Dead Zone”
`The AIA provides two new inter partes
`proceedings: post-grant review (“PGR”) and
`inter partes review (“IPR”). To prevent
`copending PGR and IPR proceedings, the AIA
`includes a provision that precludes IPR requests
`before the expiration of the nine-month
`post-grant period in which PGR requests are
`permitted. That provision, however, created a
`nine-month “dead zone” in which a challenger of
`a pre-AIA patent cannot file either a PGR
`request or an IPR request. (A pre-AIA patent is
`not subject to the “first-inventor-to-file”
`provisions that take effect on March 16, 2013.)
`In fact, in its current form, the AIA prevents PGR
`proceedings on pre-AIA patents, yet still
`requires an IPR requester to wait nine months
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`after grant of the pre-AIA patent. Section 1(d) of
`H.R. 6621 would eliminate the “dead zone” by
`providing that the AIA provision setting the
`waiting period for IPR filing (35 U.S.C. § 311(c))
`does not apply to pre-AIA patents.
`
`The AIA also currently includes a provision that
`bars PGRs for claims in a reissue patent that
`are identical to or narrower than a claim in the
`original patent if the PGR request is filed greater
`than nine months after issuance of the original
`patent. 35 U.S.C. § 325(f). Section 1(d) of H.R.
`6621 would make those claims subject to PGR
`proceedings by eliminating that provision.
`
`Reducing the Term of Pending Pre-GATT
`Applications
`H.R. 6621 would severely curb the term of
`pre-GATT applications still pending with the U.S.
`Patent and Trademark Office (“PTO”) one year
`after enactment of H.R. 6621. In 1994, the
`United States enacted the Uruguay Round
`Agreements Act, implementing the GATT
`twenty-year patent term for any patent filed on
`or after June 8, 1995. Pre-GATT patents and
`patent applications currently are entitled to a
`term that is the greater of twenty years from the
`earliest filing date (the GATT rule) or seventeen
`years from issuance (the old U.S. rule). Under
`section 1(m) of H.R. 6621, applications that
`remain pending on the one-year anniversary of
`the enactment of H.R. 6621 would have a term
`of twenty years from the earliest filing date.
`
`Changing Certain Patent Term
`Adjustment (“PTA”) Provisions
`Currently, 35 U.S.C. § 154(b)(1)(B) provides
`extension of patent term in certain instances
`when a patent application is pending more than
`three years after “the actual filing date of the
`application in the United States.” Section 1(h)(1)
`of H.R. 6621 would change that starting date to
`the actual U.S. filing date for applications filed
`under 35 U.S.C. § 111(a), or to the
`commencement of the U.S. national stage under
`section 371 for international applications.
`
`Section 1(h)(2) of H.R. 6621 would also change
`the timing of the PTO’s transmission of the
`notice of determination of PTA. Specifically, the
`PTO would transmit the notice no later than
`issuance of the patent rather than with the
`Notice of Allowance.
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`Finally, under section 1(h)(3) of H.R. 6621, an
`appeal to the U.S. District Court for the Eastern
`District of Virginia would be the exclusive
`remedy for challenging an unsatisfactory
`Director’s decision on a request for
`reconsideration of PTA. H.R. 6621 would also
`move the period for such an appeal to within
`180 days of the Director’s decision rather than
`the current 180 days after the grant of the
`patent.
`
`Addressing the Effective Date of the AIA
`Provisions Concerning Advice of
`Counsel
`Under a provision of the AIA, a party’s failure to
`obtain the advice of counsel regarding alleged
`patent infringement cannot be used in court to
`prove willful infringement or intent to induce
`infringement. 35 U.S.C. § 298. Section 1(a) of
`H.R. 6612 would apply that provision to any civil
`action commenced on or after the date of
`enactment of the AIA, and would not limit its
`application to patents issued on or after the
`enactment date.
`
`Changing Certain Provisions Directed to
`Derivation Proceedings and Interferences
`Section 1(k) of H.R. 6621 changes the time for
`filing a petition to institute a derivation
`proceeding and adds a definition of the term
`“earlier application.” In addition,
`section 1(k) of H.R. 6621 would clarify the
`PTO’s jurisdiction and appeal process for
`interferences declared after September 15,
`2012. Specifically, such interferences would be
`subject to the pre-AIA provisions of the Patent
`Act governing the Board of Patent Appeals and
`Interferences and appeals to the Court of
`Appeals for the Federal Circuit, namely, 35
`U.S.C. §§ 6 and 141, and 28 U.S.C. § 1295(a)
`(4)(A).
`
`Changing Certain Provisions Concerning
`the Applicant
`Section 1(f) of H.R. 6621 provides that an
`applicant must comply with the oath or
`declaration provision of the Patent Act before
`paying the issue fee rather than conditioning the
`issuance of a Notice of Allowance on prior
`compliance, as the current law states. Section
`1(i) of H.R. 6621 also proposes repealing
`section 373 of the Patent Act, which provides
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`that the PTO cannot accept an international
`application designating the United States if it
`was filed by someone who was not qualified to
`file a U.S. patent application under section 111,
`i.e., someone other than an inventor.
`
`Copyright © Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP. This article is for
`informational purposes, is not intended to
`constitute legal advice, and may be considered
`advertising under applicable state laws. This
`article is only the opinion of the authors and is
`not attributable to Finnegan, Henderson,
`Farabow, Garrett & Dunner, LLP, or the firm's
`clients.
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