The America Invents Act for German Readers

On March 16, 2013, the final (third) package of the Leahy-Smith America Invents Act (H.R.1249, pdf) will enter into force. This will include the transition from the traditional US fist-to-invent system to the first-to-file system as used in the rest of the world. In a recent press release the USPTO announced publication of the

• Examination guidelines for implementing the first inventor to file provisions and the
• Final rules to implement the first inventor to file provisions.

On this blog’s German sister blog ksnh::jur we recently published a series of three postings dedicated to the changes the America Invents Act causes to US patent law. As this piece of US legislation implements one of the most important reforms of internation IP law in recent years, its provisions, legal effects and possibel shortcommings have been extensively – and partly exellently – discussed by  so many US blogs that there surely is no need to add another synopsis on a Europe-focussed IP blog like this.

However, as a large portion of our regular readers live and practice in the German-speaking part of Europe, we thought that some of them might appreciated to read about this topic in their mother tongue. The three articles are structured parallel to the three packages of the AIA that enter(ed) into force on 16 Sep 2011 and 16 Sep 2013 and on 16 Mar 2013:

Die Änderungen im US-Patentrecht durch den ‘America Invents Act’

• Teil 1: Die Änderungen zum 16. September 2011,
• Teil 2: Die Änderungen zum 16 September 2012,
• Teil 3: Die Änderungen zum 16. März 2013.

As this blog is nevertheless run in English, I summarise the content of the three articles in English:

Amendments effective as of September 16, 2011:

• prioritized examination
• tax strategies deemed within the prior art
• human organism prohibition
• patent marking (private false marking lawsuits and virtual marking)
• prior user rights as defense in an infringement lawsuit
• elimination of best mode defense in infringement lawsuit
• elimination of inter partes reexamination
• increase of patent fees and micro entities’
• limiting suing multiple infringers in single lawsuit

Amendments effective as of September 16, 2012:

• reorganisation of USPTO post-grant proceedings
  • post grant review (PGR)
  • inter partes review (IPR)
  • standards to institute PGR and IPR
  • estoppel effects of PGR and IPR
  • new review proceedings versus revocation courter claim
• new procedural options
  • transitional program for covered business method patents
  • pre-issuance submissions
  • supplemental examination
• formal amendments
  • employer as applicant

Amendments effective as of March 16, 2013:

• transition from ‘first-to-invent’ to ‘first-to-file’
• effects of the new US grace period
  • the old US grace period (first-to-invent)
  • the grace period in German utility law (first-to-file)
  • the new US grace period (first-to-file)
• tactical observations regarding the new grace period
• extent of relevant prior art
  • elimination of the Himer doctrine
  • worldwide prior use and “otherwise available” prior art acc.  to § 102 (a) (1)
  • intervening rights according to § 102 (a) (2)
• prior art comparisons: ante-AIA vs post-AIA and USA vs Europe
• derivation proceedings.