AIA vs. pre-AIA patent law: what exam candidates need to know
The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011, and its most significant provisions — including the change to a first-inventor-to-file system — took full effect on March 16, 2013. Applications with an effective filing date on or after that date are governed by AIA law. Earlier applications remain under pre-AIA rules. For the patent bar exam, the practical implication is this: AIA law dominates the exam, and pre-AIA appears rarely.
The first-inventor-to-file change
The most fundamental change the AIA made was replacing the first-to-invent system with a first-inventor-to-file system. Under pre-AIA law, the first person to invent had priority — even if someone else filed first, the original inventor could "swear behind" prior art dated after their invention date. Under AIA, the first inventor to file a patent application has priority. The date of invention is no longer the central question; the filing date is.
This change eliminated interference proceedings (contested priority disputes) and replaced them with derivation proceedings (limited to situations where an applicant derived an invention from another inventor). It also changed the prior art rules in § 102 significantly.
AIA § 102 vs. pre-AIA § 102
Pre-AIA § 102 had seven distinct subsections (a) through (g), each identifying a different type of prior art. Candidates often had to analyze each subsection separately. AIA § 102 simplified this into two subsections: § 102(a)(1) covers prior art that predates the effective filing date (disclosures anywhere in the world), and § 102(a)(2) covers earlier-filed U.S. patent applications.
A critical change is the AIA grace period. Under pre-AIA, inventors had a one-year grace period for any public disclosure before filing. Under AIA, the grace period is narrower — it only protects disclosures made by the inventor (or those who obtained the information from the inventor). Third-party disclosures within one year of the filing date are prior art under AIA, unlike under pre-AIA.
What this means for exam preparation
Because applications filed before March 16, 2013 are increasingly rare in examination, the patent bar exam reflects this — the overwhelming majority of questions involve AIA law. When a question specifies a filing date on or after March 16, 2013, or gives no filing date at all, apply AIA rules. When a question specifies an earlier filing date, it is signaling a pre-AIA scenario.
The practical study implication: focus the vast majority of your § 102 preparation on AIA law. Understand AIA § 102(a)(1), § 102(a)(2), and § 102(b) exceptions deeply. Know the pre-AIA framework well enough to recognize a pre-AIA scenario and apply the basic categories of prior art — but do not spend study time memorizing every nuance of pre-AIA § 102(a) through (g) at the expense of AIA command.
Other key AIA changes
Beyond § 102, the AIA introduced several other exam-relevant changes:
- Inter partes review (IPR) and post-grant review (PGR). These PTAB proceedings replaced the old inter partes reexamination procedure and are testable on the exam.
- Micro entity fees. A new fee category below small entity, with specific eligibility requirements.
- Supplemental examination. A new post-grant proceeding allowing patent owners to submit prior art to the USPTO to immunize against inequitable conduct claims.
- Inventor's oath and declaration changes. The AIA modified who must sign the declaration and introduced the concept of an assignee filing on behalf of an inventor who cannot be reached.