The America Invents Act (AIA) Handbook: A Guide to the Patent Law Reform of 2011: 2015 Edition

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Mary Merchant

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The American Invents Act is the most comprehensive overhaul since 1952, ending the "first-to-invent" system and replacing it with"first-inventor-to file" patent rules. This important and timely handbook explains how the new patent regime works and how the United States Patent and Trademark Office’s recently promulgated regulations and the new law’s myriad effective dates affect your practice.

Topics include:

  • AIA changes to patent marking statutes
  • New procedural rules for patent litigation
  • Expansion of the prior user rights defense
  • Prioritized examination and supplemental examination provisions
  • Prior art submissions to the USPTO
  • New post-grant review proceedings as an alternative to litigation
  • Establishment of new USPTO Offices
  • Programs and Studies Provided for Under the AIA
  • Practice Before the Patent Trial and Appeal Board
  • Numerous other statutory and regulatory changes
This product is periodically updated with new editions.

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  • Availability: Available
  • Brand: Law Journal Press
  • Product Type: Books
  • Edition: Handbook
  • ISBN: 978-1-58852-396-9
  • Pub#/SKU#: 722
  • Pub Date: 10/29/2015

Author Image
  • Mary Merchant
Mary Anthony Merchant, J.D., Ph.D. is a partner at Ballard Spahr LLP,
where she leads the biotechnology patent group. She has practiced law for
twenty years, focusing on intellectual property law, including trademark
registration and patent procurement, with an emphasis on the life
sciences. Her practice encompasses the biotechnology, pharmaceuticals,
agricultural sciences, cosmetics, consumer products, nutraceuticals and
medical device fields. Dr. Merchant’s graduate and post-graduate research
involved both mammalian and plant molecular biology, protein biochemistry, immunology,
microbiology and infectious diseases. She received her undergraduate degree in Biology,
cum laude, from Randolph-Macon Women’s College, her Ph.D. from the University of Florida
College of Medicine and her J.D. degree, with honors, from the University of Florida College of
Law. She lives in Atlanta, Georgia with her husband and two corgis.



About the Author

Chapter 1: Overview of the AIA

§ 1.01 Generally

§ 1.02 History of the AIA

§ 1.03 Effective Dates for the AIAEnactments

Chapter 2: Patent Marking and the AIA

§ 2.01 False Marking

[1]—AIA Changes

[2]—Litigation Over False Marking

§ 2.02 Virtual Marking

Chapter 3: Joinder Under the AIA

§ 3.01 AIA Changes

§ 3.02 Prior Litigation

§ 3.03 Effects of AIA Changes

Chapter 4: Prior Use Defense and BestMode Requirement Under the AIA

§ 4.01 Prior User Defense


[2]—Statutory Changes Under the AIA

[3]—USPTO Study

§ 4.02 Best Mode Requirement

Chapter 5: AIA—Multiple Changes

§ 5.01 Tax Strategies Deemed to BeWithin the Prior Art

§ 5.02 Human Organism Prohibition

§ 5.03 Venue

§ 5.04 Statute of Limitations for OEDDisciplinary Proceedings

§ 5.05 Fee Setting Authority

§ 5.06 Establishing Micro Entity Status

§ 5.07 Patent Term Extension

§ 5.08 Final Rule of Practice GoverningInter Partes Reexamination

Chapter 6: Prioritized Examination

§ 6.01 Prioritized Examination Procedure


[2]—AIA Changes

§ 6.02 USPTO Rules

Chapter 7: Supplemental Examination

§ 7.01 AIA Provision of SupplementalExamination

§ 7.02 Supplemental Examination Requests

§ 7.03 Miscellaneous Matters in theFinal Rules

Chapter 8: Submissions Under the AIA

§ 8.01 Preissuance Submissions by ThirdParties

§ 8.02 Protests in Pending Applications

§ 8.03 Changes to Ex Parte ReexaminationProcedure

Chapter 9: Inter Partes Review

§ 9.01 AIA Amendments

§ 9.02 USPTO Rules

§ 9.03 Expected Use of Inter PartesReview Process

Chapter 10: Post-Grant Review andTransitional Program for Business Method Patents

§ 10.01 AIA Provision for Post-GrantReview

§ 10.02 Rules for Filing of Petition andResponse

§ 10.03 Expected Use of the Post-GrantReview Process

§ 10.04 Transitional Program forBusiness Method Patents

Chapter 11: Applicant and Inventor’sOath or Declaration Amendments Under the AIA

§ 11.01 Generally

§ 11.02 Establishing Inventorship andIdentifying the Applicant

§ 11.03 Correction of Inventorship

[1]—Correction of Inventorship in anInterference Procedure

[2]—Correction of Inventorship in anIssued Patent

§ 11.04 Inventor’s Oath or Declaration

§ 11.05 National Stage Application

§ 11.06 Supplemental Oath or Declaration

§ 11.07 Particular Oath or DeclarationInstances

[1]—Substitute Statements

[2]—Inventor Statements in Assignments

[3]—Continuing Application Practice

[4]—Reissue Practice

[5]—General Considerations

§ 11.08 Other Changes Made in the FinalRules

[1]—Rules Regarding the Applicant

[2]—Power of Attorney

[3]—Rules for Assignees

[4]—Application Data Sheet

[5]—Correspondence Address andPublication

[6]—Miscellaneous Changes

Chapter 12: First to File

§ 12.01 AIA Adoption of First to FileSystem




[4]—Amendments by the AIA Related to theFirst-Inventor-To-File Amendments

§ 12.02 Final Rules for Implementing theFirst-Inventor-to-File Rules


[2]—Priority Claim to Foreign-FiledApplications

[3]—Priority Claim to Prior-Filed U.S.Applications

[a]—Provisional Patent Applications

[b]—Nonprovisional and InternationalPatent Applications

[4]—Rules for Prior Art for ApplicationsUnder Common Ownership or in Joint Research Agreements

[5]—Rules for Effective Filing Date

[6]—Rules for Prior Art Exceptions UnderAIA Title 35 of the United States Code, Section 102(B)

[7]—Section 1.131 Affidavits orDeclarations

[8]—Other Amendments to the Rules

§ 12.03 Derivation Proceedings and CivilActions


[2]—Amendment of Section 291

[3]—Derivation Proceedings Before thePTAB

Chapter 13: Changes to USPTO

§ 13.01 Establishment of New USPTOOffices

§ 13.02 Travel Expenses and Pay for PTABJudges

Chapter 14: Miscellaneous Changes Madeby AIA

§ 14.01 Reserve Fund Established

§ 14.02 Electronic Filing Incentive

§ 14.03 Changes to Funding Agreements

§ 14.04 Advice of Counsel

§ 14.05 Federal Court Jurisdiction

§ 14.06 Priority Examination forImportant Technologies

§ 14.07 Repeal of Statutory Invention

§ 14.08 Other Sections of the AIA

Chapter 15: Programs and StudiesProvided for Under the AIA

§ 15.01 AIA Requirement for New Programsand Reports

§ 15.02 Specific Programs and Reports

[1]—The Pro Bono Program

[2]—Small Business Ombudsman Program

[3]—International Patent Protections forSmall Businesses

[4]—Report on the Prior User RightsDefense

[5]—Diversity of Applicants

[6]—Genetic Testing Report

[7]—Effects of First to File on SmallBusiness

[8]—Patent Litigation Report

[9]—Report on Misconduct ProceedingsBarred Under the Statute of Limitations

[10]—Report on Virtual Marking

[11]—Report on Satellite Offices of theUSPTO

[12]—Report on Implementation of the AIA

Chapter 16: Practice Before the PatientTrial and Appeal Board

§ 16.01 Practice Before the Patent Trialand Appeal Board

§ 16.02 Judicial Review of Patent Trialand Appeal Board Decisions