AIA Technical Corrections Not Just Technical

Author:  Stephanie M. Sanders

Although the AIA Technical Corrections Act, which was enacted on January 14, 2013, does indeed make some “technical corrections,” it also substantively affects patent prosecution, patent trials, and patent term adjustment in several important ways.

Patent Prosecution

Under the AIA, applicants were required to file an executed oath or declaration (or substitute statement), by the time the application was in condition for allowance. The AIA Technical Corrections Act changes this deadline—an oath or declaration now may be properly filed up until the date on which the issue fee is paid. This change became effective January 14, 2013.

Patent Trials

As originally enacted, the AIA provided that first-to-invent patents and reissued patents could not be challenged in an inter partes proceeding during the first nine months after issuance. The AIA Technical Corrections Act eliminates this so-called “dead zone” such that first-to-invent patents and reissued patents are now eligible for inter partes review immediately upon issuance. This change is effective as of January 14, 2013.

Patent Term Adjustment

The AIA Technical Corrections Act changes several aspects of Patent Term Adjustment (PTA). The U.S. Patent and Trademark Office (USPTO) will award PTA to applicants if the USPTO does not begin the examination process within fourteen months of the application filing date. The USPTO, however, had determined the application filing date differently depending upon whether the application was initially filed as the national stage of a PCT or directly in the USPTO as a nonprovisional application. The starting date for calculating the fourteen-month period of PTA in the case of the national stage of a PCT had been the date on which an international application fulfilled the requirements of 35 U.S.C. § 371(c) to the date of commencement of the national stage. Fulfilling these requirements included submitting the inventors’ oath or declaration. For a direct USPTO nonprovisional application, however, the starting date of the fourteen-month period was simply the date that the application was submitted to the USPTO. This meant that a PCT national stage application might receive less PTA than a direct U.S. nonprovisional application filing if the inventors’ oath or declaration was not submitted on the date of national stage entry. The technical amendments corrected this anomaly so that the date from which the fourteen-month period is measured in both cases is the same – the date that the application is submitted to the USPTO.

In addition, rather than providing a PTA determination upon allowance, the AIA Technical Corrections Act allows the USPTO to transmit a single notice of PTA no later than the date of issuance of the patent. The USPTO subsequently simplified the rules for challenging a PTA determination or requesting recalculation of a PTA award. For patents issued after January 14, 2013, it is no longer necessary to request recalculation of pre-allowance USPTO and applicant delays before the patent issues. Instead, an applicant may request reconsideration of a PTA determination made by the USPTO within two months from the date the patent was granted. This time period is extendible for an additional five months. The AIA Technical Corrections Act also clarifies that a civil action in the Eastern District of Virginia under 35 U.S.C. § 154(b)(4) is the remedy for an applicant who is dissatisfied with the Director’s decision on a request for reconsideration of the USPTO’s PTA determination.

All of the changes affecting PTA apply to patents issued on or after January 14, 2013.

 

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