America Invents Act Technical Amendments Enacted into Law | Practical Law

America Invents Act Technical Amendments Enacted into Law | Practical Law

President Obama signed H.R. 6621 into law, making certain technical amendments to the Leahy-Smith America Invents Act (AIA).

America Invents Act Technical Amendments Enacted into Law

Practical Law Legal Update 7-523-3878 (Approx. 3 pages)

America Invents Act Technical Amendments Enacted into Law

by PLC Intellectual Property & Technology
Published on 15 Jan 2013USA (National/Federal)
President Obama signed H.R. 6621 into law, making certain technical amendments to the Leahy-Smith America Invents Act (AIA).
On January 14, 2013, President Obama signed H.R. 6621 into law, making certain technical corrections to the Leahy-Smith America Invents Act (AIA). The amendments were primarily to correct several drafting errors and clarify certain provisions. Notably, it does allow for immediate inter partes review of patents having an effective filing date before March 16, 2013, eliminating a dead zone preventing these patents from being challenged until nine months after issuance. For more on inter partes review, see Leahy-Smith America Invents Act: Overview: Inter Partes Review).
The bill also clarifies provisions concerning:
  • The failure to obtain counsel's advice not proving willful infringement.
  • The inventor's oath.
  • Notice of patent term adjustments
  • Derivation proceedings.
  • Terms of the Patent Public Advisory Committee.
The bill passed by Congress does not include a controversial provision included in the original bill proposed in the House of Representatives concerning pre-GATT patent applications (those filed before June 8, 1995) still pending in the USPTO. The proposed provision would have retroactively applied the post-GATT term for a US patent (20 years from earliest filing date provisions) to pre-GATT patents, which are currently given the benefit of a 17-year term from the date of grant. This would have effectively eliminated the term of any currently-pending pre-GATT patent application. A later version of the House bill replaced this with a limited provision requiring the USPTO to issue a report on pre-GATT applications, which was ultimately rejected by the Senate.