January 29, 2023

Volume XIII, Number 29


January 27, 2023

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USPTO Announces Effective Dates of America Invents Act

The U.S. Patent Office has announced the effective dates of the America Invents Act.  The U.S. Patent Office interprets the effective dates of some of the provisions of the Act as occurring one day before the day we provided in our previous client alert summarizing key provisions of the Act.  The effective dates for first-to-file, post grant review, transitional post grant review for business method patents, and pre-issuance prior art submissions by third parties, which are all either 12 months or 18 months from enactment, are all one day earlier than the day reported in our previous client alert.  Below is an updated summary of the effective dates of some key provisions of the Act. 

First-to-File – effective March 16, 2013

Prioritized Examination – effective September 26, 2011

15 Percent Fee Increase – effective September 26, 2011

Post Grant Review

  • Post Grant Review - applies to patents issued from applications having an effective filing date of March 16, 2013 and later
  • Inter Partes Review - effective September 16, 2012 and applies to all patents regardless of the application filing date
  • Ex Parte Reexamination - current ex parte reexamination provisions remain effective

Transitional Post Grant Review for Business Method Patents – effective September 16, 2012 and applies to any business method patent regardless of issue date

Pre-issuance Prior Art Submissions by Third Parties– effective September 16, 2012 and applies to any patent application regardless of filing date

False Marking – effective September 16, 2011

Virtual Marking – effective September 16, 2011

Prior User Defense – effective September 16, 2011 and available to all patents issued on or after September 16, 2011

Tax Avoidance Strategies within Prior Art– effective September 16, 2011 and applies to any patent o  r patent application regardless of filing date

©2023 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume I, Number 270

About this Author

Richard Kaiser, Michael Best, patent prosecution lawyer, inter partes review legal counsel,

Rich has a strong track record in intellectual property law, specializing in all stages of the patenting process for mechanical arts and technologies. He helps clients build patent portfolios, avoid or invalidate competitor patents, and defend against infringement claims.

Through his extensive experience with utility and design patents, Rich has become a trusted, long-term business partner to producers and manufacturers. Rich works closely with clients, providing meaningful guidance on their U.S. and international patent strategies. Clients...

alan c. cheslock, attorney, michael best and friedrich, intellectual property, patent engineer

Al works with manufacturers that are developing products such as vacuum cleaners, power tools, heat exchangers, and air purifiers. These clients rely on Al for his quick work and novel approach in managing cost-effective patent portfolios and prosecuting patent applications, both internationally and at the U.S. Patent and Trademark Office (USPTO). He also brings solid advice and good judgment to bear during the product development stage to avoid infringement of competitors’ patents.

Al’s experience keeps him at the cutting edge of patent law and enables him to update clients on new...