America Invents Act

Banner & Witcoff offers the following content as a resource to help clients understand the potential impact of the Leahy-Smith America Invents Act:

On March 8, 2011, the U.S. Senate voted 95 to 5 to pass the Patent Reform Act of 2011 (S. 23). It was introduced by Senator Patrick Leahy on Jan. 25, 2011, and included the following significant changes to the patent system:

  • First-inventor-to-file system
  • Post-grant opposition system
  • Post-grant review for business method patents
  • USPTO fee-setting authority and USPTO funding

On June 23, 2011, the U.S. House of Representatives approved the America Invents Act (H.R. 1249). It was introduced by Congressman Lamar Smith on March 30, 2011, and approved by the House Judiciary Committee in a 32-to-3 vote on April 14, 2011. While similar to the legislation passed by the Senate, it included a few key differences:

  • Protection of inventors’ prior user rights if they disclose inventions one year before filing patent applications
  • Extended timeline for inter partes review initiation after litigation begins
  • Longer time frame for post-grant review
  • A three-year safe harbor from liability for expired patents
  • A sunset provision for the USPTO’s fee-setting authority

On Sept. 8, 2011, the U.S. Senate approved the Leahy-Smith America Invents Act (H.R. 1249), finalizing congressional acceptance of long-anticipated U.S. patent reform.On Sept. 16, 2011, President Barack Obama signed the Leahy-Smith America Invents Act into law.

In 2012, the USPTO implemented rules to govern office trial practice for AIA trials, including inter partes review, the transitional program for covered business method patents, and derivation proceedings to 35 U.S.C. 135, 316 and 326 and AIA 18(d)(2). The office also published a Patent Trial Practice Guide for the rules to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings.

In April and May 2014, the USPTO asked for feedback on how to make the trial proceedings more transparent and effective by adjusting the rules and guidance where needed.

In June 2014, the office published a Request for Comments in the Federal Register and accepted those comments until October 2014.

In May 2015, the USPTO issued an initial round of changes, which included an increase in the page limits for some AIA review filings.

In August 2015, the office announced a second round of proposed changes that would let patent owners give more robust responses to petitions and impose new requirements to avoid misconduct in filings.


Banner & Witcoff attorneys are available to answer questions and discuss patent reform. Media inquiries should be directed to Amanda Robert at (312) 463-5465 or