U.S. Patent Reform and Photonics Companies

A new law represents the most significant patent reform that the United States has seen in over 50 years. Joseph Gortych explains what optical entrepreneurs need to know about the America Invents Act.



As those familiar with the patent process know, the U.S. Patent and Trademark Organization (USPTO) has until recently employed a “first-to-invent” system. That means that different inventors who filed patent applications on the same invention at different times could find themselves embroiled in an “interference proceeding” to determine who was first to invent and thus entitled to the patent.

That changed on 16 March of this year, when the “first-to-file” provision of the Leahy-Smith America Invents Act (AIA, also called “The Patent Reform Act of 2011”) went into effect. Under the new law, which President Obama signed in September of 2011, the inventor who files first wins the patent. This first-to-file system is more in line with how intellectual property laws work in other countries.

The second filer’s only recourse is to show in a “derivation proceeding” that the first filer did not actually invent the product or process being patented but instead derived it from the second filer. The new system retains the one-year grace period for filing a patent application on an invention once the inventor discloses it.

The first-to-file provision is the biggest change associated with the new law; it will reward those whose patenting efforts are organized and efficient. To follow are other aspects of the AIA that are worth knowing.

Broader definition of “prior art”

The term “prior art” refers to every innovation made before the invention. Under the old law, public use and offers for sale of an invention by the inventor or invention owner could become prior art only if they occurred in the United States. Now, however, activities outside the United States can become prior art as well. The one-year grace period also applies here, and a private sale or offer for sale does not start the “on sale” clock ticking.


Under the old law, “small entities”—universities, individual inventors and companies with fewer than 500 people—could qualify for a 50-percent reduction in certain USPTO fees. Now, in addition to the “small entity” status, there is a “micro-entity” status, which grants qualified entities a 75-percent reduction in fees.

The rules for qualifying as a micro-entity are a bit involved; see the new section of the patent laws (35 USC § 123) for the particulars. This change has important implications for those working in the fragmented photonics market, where 90 percent of the industry is comprised of companies with fewer than 100 employees.

Prior-use defense

Under the old patent law, an inventor practicing his or her invention as a trade secret could be sued for patent infringement if someone else later patented the same invention. The only exceptions were for business method inventions.

The new law expands that very limited “prior-user defense” to include all types of inventions. This defense requires a commercial use or sale of the invention at least one year prior to the earlier of two dates associated with the problematic patent: the effective filing date or the publication date.

Post-grant review of an issued patent

Once a patent is issued, there are a limited number of ways to have the USPTO reconsider it. The AIA preserves the re-examination process, albeit with slight changes.

The AIA created a new avenue for review called the post-grant review (PGR), which is like a mini-trial; it is similar to the opposition procedure available for European patents. Some PGR boundary conditions include:

  • The review must be requested within nine months of the patent’s issuance;

  • A wider range of prior art can be submitted compared to a re-examination; and

  • It applies only to patents filed under the new system (e.g., with a filing date of 16 March 2013 or later).

As a consequence of the last condition, PGR provisions won’t see any action until patents filed under the new system start issuing. Attorneys will be watching closely to see if PGR is superior to just heading to federal court.

Final thoughts

The AIA is complex. Nearly two years after it was signed into law, patent practitioners are still digesting its details and implications. Fortunately, a great deal of information can be found online. The USPTO website is a good place to start: www.uspto.gov. For the full text of the AIA, visit www.govtrack.us/congress/bills/112/hr1249/text.

Joseph E. Gortych is president of Opticus IP Law, PLLC, a law firm based in Sarasota, Fla., U.S.A., and dedicated to optics, photonics and semiconductor technologies. His book on patents and patenting, Consider a Spherical Patent, is due out in late 2013.

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U.S. Patent Reform and Photonics Companies

A new law represents the most significant patent reform that the United States has seen in over 50 years. Joseph Gortych explains what optical entrepreneurs need to know about the America Invents Act.

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