Friday, May 24, 2013

America Invents Act (AIA) Top 10 List

For better or worse, the America Invents Act has now been fully implemented.  Accordingly, we felt it appropriate to briefly summarize some of the changes.  So, without further adieu, the top 10 changes are:

10.         You can now create a "shielding" disclosure that will operate as prior art against your competitors while still allowing you one year to file your own patent application.  But beware IP (Intellectual Property) thieves who might force you into filing an expensive derivation proceeding if they file their application first.

9.         The Patent Office and courts now consider virtually anything, anywhere, in any language that is publically available as prior art.

8.         The Patent Office will allow a patent owner to request supplemental examination of their own patent.

7.         Entrepreneurs can now pay to have the examination of their applications expedited.

6.         The Patent Office is establishing new offices outside of the D.C. area.

5.         Tighter standards for filing infringement lawsuits have partially tied the hands of patent trolls.

4.         The U.S. now allows patents and applications to be challenged with four different procedures (besides a full blown trial in federal district court).  They are: third-party prior art submissions, ex parte reexamination, inter partes review, post grant review (PGR), and PGR for covered business methods.

3.         "Micro entities" can now pay lower Patent Office fees.

2.         The one-year grace period for filing a patent application following an "offer for sale" of something incorporating a patentable idea has probably vanished.  Entrepreneurs should plan their marketing and sales activities such that no offer for sale occurs until they have at least filed a provisional patent application.

1.       The first inventor to file an application for a patentable idea will now get the patent even though someone else might have invented it first (a.k.a. "First-to-File" patenting).

In coming weeks we will be revisiting some of our earlier postings in light of these changes.  In the meantime, we at the Villhard Patent Group would be happy to discuss these changes and how they relate to your intellectual property.  Feel free to contact us at or 512-897-0399 and to visit us at

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