The America Invents Act — what changed and what it means for the exam

The most fundamental change in the AIA. The U.S. abandoned its historic first-to-invent priority system and joined the rest of the world in awarding patent rights to the first inventor to file a patent application. For applications with an effective filing date on or after March 16, 2013, priority is determined by filing date — not invention date. This change rewrote §§ 102 and 103 and eliminated interference proceedings.

AIA § 102 expanded what qualifies as prior art. Under AIA § 102(a)(1), a disclosure is prior art if it was made before the effective filing date of the claimed invention — regardless of who made it. AIA § 102(a)(2) covers U.S. patents, published applications, and PCT applications that have an earlier effective filing date. The one-year grace period under AIA § 102(b) is narrower than its pre-AIA counterpart and applies only to the inventor's own disclosures.

IPR replaced inter partes reexamination for challenging issued patents on the basis of prior art (patents and printed publications only). Any person who is not the patent owner may petition the PTAB to institute an IPR within one year of being served with a complaint alleging infringement. The threshold standard is a 'reasonable likelihood' that the petitioner would prevail on at least one challenged claim. IPR proceedings are governed by Chapter 37 C.F.R. Part 42.

PGR allows any ground of invalidity to be raised before the PTAB — not just prior art. PGR must be filed within 9 months of the grant or reissuance of a patent. The threshold standard is 'more likely than not' that at least one challenged claim is unpatentable. PGR is only available for patents with an effective filing date on or after March 16, 2013 (AIA patents).

Derivation proceedings replaced interference proceedings and have a very narrow scope: they are only available to challenge whether an inventor named in an earlier-filed application derived the claimed invention from an inventor named in the petitioner's later-filed application. Interference proceedings continue to apply to applications with an effective filing date before March 16, 2013.

The AIA created a new 'micro entity' status, providing a 80% reduction (later adjusted) in fees beyond the existing small entity 60% reduction. Micro entity status applies to individual inventors who (1) qualify as a small entity, (2) have not been named as inventor on more than 4 previously filed applications, (3) did not have a gross income exceeding 3× the prior year's median household income, and (4) have not assigned rights to an entity that exceeds the income limit.

Supplemental examination allows patent owners to request that the USPTO consider, reconsider, or correct information believed to be relevant to the patent. If conducted, it can immunize the patent from inequitable conduct challenges based on that information (with certain exceptions). It can trigger ex parte reexamination if a substantial new question of patentability is raised.

The AIA significantly expanded the prior commercial use defense, allowing a party who commercially used a claimed invention at least one year before the earlier of the effective filing date or public disclosure of the patent to assert that prior use as a defense to patent infringement.