The long awaited reforms to embetter the patent system were realized by the America Invents Act (AIA). The act was signed into law by President Obama on the 16th of September, 2011. According to a White House press release published on the same day, AIA will help businesses and inventors in the following ways:
- The patent processing time has reduced to one third of the previous time. This means that a fast track option is created that promises a 12 months turnaround time.
- There are claims that the USPTO will reduce the number of the pending patent applications. However, the possibility of this has been a subject of argument. Critics claim that the current law provides multiple dispute resolution procedures which would increase workload at the USPTO.
- The law provides better ways of avoiding disputes regarding patent validity at lesser than usual costs.
- The law aims at improving the patent quality. The quality management processes would have new resources to improve the quality of patents granted. The patent issuance guidelines would be streamlined and tightened.
- The law also provides protection for the American inventors abroad. The USPTO will be working in co-operation with the patent offices around the world to protect the American intellectual property. One of the major changes brought about by the AIA is the shift from “first-to-invent” to “first-to-file”. The other changes are the expansion of meaning of prior art and significant reduction in costs for new micro entities.
The “first-to-file” system will be brought into action starting 16th of March, 2013. According to this system, a patent’s priority date will be decided based on its filing date. This means, a patent application which is filed first would be given priority over an application which is filed later. This is applicable on patent applications filed after the mentioned date. Previously, in order to grant a patent the publicly available texts such as publications were reviewed to see the authenticity and novelty of the invention. Now, there are prior art searches conducted to verify the novelty of the inventions.
Under the current law, a “micro-entity” status has been added wherein the micro-entity can be an inventor or a university meeting certain criteria. A micro-entity is eligible to a discount of 75 percent in the patent fee or in the patent application. Some of the major concerns raised regarding the AIA are:
- Small companies and entrepreneurs were not properly represented in the process of arriving at the final version of AIA, whereas large companies spared no efforts in lobbying. It is believed that certain provisions in the AIA are detrimental for the small companies.
- Another concern expressed was that the act does not do much to curb non practicing entities from suing practicing entities. Non practicing entities are companies that own patents and no products are based on the patented technologies. The patents are enforced in case a license has not been taken. The practicing entities are companies that offer products or services based on the patented technologies.
- Yet another reservation is that the bill will only increase the workload in the USPTO, which according to some is already understaffed. One of the aims of the AIA is to reduce the patent application processing time from three years to one year. However, the AIA provides multiple dispute resolution procedures which will only increase the workload at the USPTO.