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President Signs AIA Technical Amendment

Thursday, January 24, 2013

President Obama signed into law Jan. 14 a bill, H.R. 6621, that mostly makes technical corrections to the 2011 patent reform bill, the America Invents Act.

The bill fills in some gaps in the AIA and clarifies some items that were not particularly controversial. It goes beyond the AIA only in the area of patent term adjustments, and the change there is small.

Perhaps the most significant modification to the AIA's provisions is the elimination of “dead zones”--periods when neither of the new post-grant review and inter partes review challenges against issued patents could be filed at the Patent and Trademark Office.

Both houses of Congress approved the bill just before the end of the last Congress (02 PTD, 1/3/13), minus the only controversial provision of the original draft of the bill's sponsor, Rep. Lamar S. Smith (R-Texas). The provision would have forced those patent applications still in progress though filed over 17 years ago to come to a conclusion.

In statements on the floor as the bill was finally approved, both Smith and his Senate co-sponsor of the AIA, Sen. Patrick J. Leahy (D-Vt.), vowed to pursue further legislation to deal with that issue in the next Congress.

Smith and Leahy also promised to purse correction of what they termed a “scrivener's error” in the estoppel language related to the new post-grant review proceeding, at 35 U.S.C. §325(d).

Section 325(d) estops a PGR challenger from further litigation “with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” Testimony in the House Judiciary Committee's May hearing debated whether patent reform combatants had agreed that the estoppel should have been limited to grounds raised (97 PTD, 5/21/12).


Text is available at /uploadedFiles/Content/News/Legal_and_Business/Bloomberg_Law/Legal_Reports/HR6621_Enacted(1).pdf.

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