Post-Grant Patent Examination after the America Invents Act

Abstract

The America Invents Act (AIA) introduces profound legal and administrative changes to US patent law. Recently, many practitioners have focused on the US patent system transformation from a first-to-invent system into a first-to-file system. Since March 16, 2013, a patent will generally be awarded to the first inventor to file an application on an invention and not the first to actually invent it. This will be implemented through changes in 35 U.S.C. § 102. The long-developed US legal concepts of “conception” and “reduction to practice” of ideas, for example, will thus become irrelevant as such. The US patent filing system will eventually resemble Europe’s and most other countries’ patent filing systems. The new law fundamentally reforms the paths for contesting granted patents. With various applicable transitional periods and different reviews, reexaminations and other proceedings available, an analytical and structured overview of the revised post-grant procedures is in order. Also, considering the last step of AIA implementation on March 16, 2013, the functional significance of the most relevant changes from old to new law is outlined below. In this context, crucial parallels as well as discrepancies between the reformed US Patent and Trademark Office (USPTO) rules and the practice of the European Patent Office (EPO) shall be presented.