1 AMERICA INVENTS ACT 報告人：林淑靜 學號： M

2 A New Era ！ This Act was signed into law by President Obama on September 16, 2011 and represents first major change in U.S. patent system in nearly 60 years.

3 Purpose of Act ★ Increase economic development. through invention innovation. ★ Improve patent quality. ★ Protect American jobs. ★ Provide more efficient patent system.

4 Important highlights of the Act ★ Introduction to two parts of the Act: 1. The addition. 2. Comparison with new and old law.

5 America Invents Act ★ The Addition ： 1.Micro entity. 2.USPTO Patent Fees Increase. 3.Post Grant Challenges.

6 1.Micro entity ★ In addition to “large entity” and “small entity”, the “micro entity” which reduces 75% in fees is concluded into the new law.

7 1.Micro entity ★ Limitation: 1. equal to the qualification of small entity. 2. the application below four cases. 3. the revenue below about US$ 150,000 a year.

8 2.USPTO Patent Fees Increase Effective on 9/26/11, a 15% increase will apply to general statutory and maintenance fees. ★ Increase in application: large entity US$160 small entity US$80 ★ Increase in license: large entity US$230 small entity US$115

9 3.Post Grant Challenges ★ Post Grant Review is a procedure founded newly. ★ The third party can file a challenge to whether it is unpatentable. ★ Limitation: A patent may be challenged during the first 9 months after its issue date. P.S. It is similar to prosecution system in Taiwan.

10 America Invents Act ★ Contrast to the new and old Act ： 1.First to File System. 2.Prosecution of Applications by Assignee. 3.Best Mode. 4.Virtual Marking & False Marking. 5.Willful Infringement

11 1.First to File System ★ Before the Act ： America is the only country adopting 「 first inventor to invent 」 ; that is, the inventor who completes his or her invention will be awarded the patent immediately, even though others file the application prior.

12 1. First to File System ★ After the Act ： They adopt first inventor to file, which means we identify the novelty by effective filing date instead. Effective on 3/16/13 Article ： 35 U.S.C.102

13 2.Prosecution of Applications by Assignee ★ Before the Act ： The inventor must sign oath & declaration to apply for American patent and apply it by the inventor’s name; in other words, a inventor must be a natural person. If someone wants to apply by artificial person, the prosecution of application must be practiced first.

14 2.Prosecution of Applications by Assignee ★ After the Act ： oath & declaration substitutes for prosecution of application, that is, a firm or artificial person is granted to apply for patent directly in order to reduce the time and fee. P.S. The system is the same with current law in Taiwan. Effective on 9/16/12

15 3.Best Mode ★ Before the Act ： If a specification doesn’t disclose the information about the best mode, the patent it involves may be, revoked, invalidated, or not executed.

16 3.Best Mode ★ After the Act ： If a specification doesn’t disclose the information about the best mode, it won’t be a reason to be revoked, invalidated, or not executed anymore.

17 4.Virtual Marking & False Marking ★ Before the Act ： As long as the patent mark doesn’t coincide with fact (for example, the overdue patent is marking on), it can be seen as a false marking. Anyone can file a tort prosecution, and the owner of patent should pay large amount of indemnity for the false marking.

18 4.Virtual Marking & False Marking ★ After the Act ： The virtual marking will be used. A patented article can be marked with an web address which associates the article, or with expired date. It is no longer seen as a false marking, and only can be filed by a person who suffers damage, not anyyone.

19 5.Willful Infringement ★ Before the Act ： The defense prosecuted for infringement can assert he or she didn’t infringe on purpose by means of the fact that he or she didn’t be advised by a professional lawyer.

20 5.Willful Infringement ★ After the Act ： The defense prosecuted for infringement won’t assert involuntary infringement if he or she doesn’t get the advice from a lawyer or claim the evidence in litigation. Therefore, if there is any concern about infringement, the party should contact with lawyer as soon as possible and take the necessary steps. Effective on 9/16/12

21 Conclusion To sum up, there are some vital revolutions in American patent, especially in first inventor to file. In the interim before 3/16/2013, however, all we can do is advise inventor to issue the application for patent in advance after finishing the invention, and then use the invention in public or sell it in order to protect rights.

22 This is my reporting. Thanks for your attention. The End