112-HR1249 Leahy Smith America Invents Act

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Title 112-HR1249 Leahy Smith America Invents Act
Congress 112
Sponsor Rep. Smith, Lamar (R-TX-21)
Committee(s) House Judiciary, House Budget
Related 112-HR243 Patent Lawsuit Reform Act of 2011, 112-HR6621, 112-S23 America Invents Act, 112-S139 Equal Access to Tax Planning Act
Status Enacted
© edegan.com, 2016

Reference: https://www.congress.gov/bill/112th-congress/house-bill/1249

The H.R.1249: Leahy Smith America Invents Act [1] was signed into law by President Obama on September 16, 2011. The American Invents Act (AIA) was written and proposed by Senator Patrick Leahy and Representative Lamar Smith. The bulk of the act changes and provides new guidelines for USPTO practices. [1] The American Intellectual Property Law Association refers to the AIA as the most comprehensive and important innovation reform in over 50 years. [2] Supporters claim that the reforms in the AIA eliminate major differences between the American patent system and international patent systems. [3] Key provisions in the act focus on reforming:

  • how patents are filed and examined.
  • how third parties may request patent reviews.
  • how prior user rights may be applied.
  • how the USPTO manages its fees and revenue.



Prior to enacting the AIA, the first-to-invent system was the standard for determining priority for patent applications. The AIA establishes a first-to-file system. An inventor may only claim inventorship on a previously filed patent application if a derivation proceeding proves that the inventor's patent application was used to derive the previously submitted application. [3] Additionally, if an inventor disclosed or sold information regarding a patent or other patents were derived from the inventor's subject matter within less than a year of filing the patent application, these actions may not be considered prior art. [2]

Examination Procedures

The AIA leaves Ex Parte Reexamination untouched and created Inter Partes Review (IPR) to replace Inter Partes Reexamination. [3] Post-Grant Review (PGR) proceedings are introduced by the AIA as a new form of challenging previously granted patents. IPRs may be requested by entities other than the patent assignee to invalidate one or more of a patent's claims. For the request to be valid, it must satisfy a "likelihood of success" standard. For more information on review proceedings see Challenging Patents. The AIA replaces the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (PTAB), which will conduct the PGR proceedings as well as IPR and covered business method (CBM) patent reviews.

Additionally, if a patent owner feels something is incorrect or missing from the patent claims, supplemental examinations may be granted so long as the concerns meet requirements set by the Director of the USPTO. The USPTO must respond within three months of the request. The request must raise a "substantial new question of patentability." [2]

Prior User Rights

The prior user defense, when an accused party claims prior commercial use, could only previously used for business method patents. Under the AIA, any process, machine, manufacture, or composition of matter accused of infringing a patent may use the prior user defense. The prior user defense is only admissible if the alleged infringement occurred more than a year prior to filing of the infringed patent or public disclosure of the patent. [4] A nonprofit entity whose commercial use is intended to benefit the public also qualifies for the prior user defense. [2]


The AIA establishes that the fees for USPTO patent services will be determined by the Director of the USPTO. [2]

A distinction is made between small entities and micro entities in the act. Micro entities are eligible for up to a 75% reduction of fees, compared to a maximum reduction of 50% for small entities. [2]

Small Business

To provide additional support for independent inventors and under-resourced businesses, the USPTO is required to help develop pro bono programs at IP law associations. These programs would give low budget entities access legal guidance. The USPTO will also need to create a Patent Ombudsman Program to guide smaller entities through the application process. [2]

Patenting Limitations

The AIA specifies that patent applications may no longer be granted for human organisms. A patent may not be considered invalid if the inventor does not lay out the best method for implementing the invention. [2]


<references> [1] [2] [3] [4]

  1. 1.0 1.1 [2] Nathan Hurst, 'How the America Invents Act Will change Patenting Forever', Wired (2013).
  2. 2.0 2.1 2.2 2.3 2.4 2.5 2.6 2.7 2.8 [3] 'Summary of America Invents Act', AIPLA.
  3. 3.0 3.1 3.2 3.3 [4] 'Summary of the America Invents Act', The National Law Review, (2012).
  4. 4.0 4.1 [5] 'America Invents Act's Prior Use Defense', Blank Rome LLP (2012).