1. MEMORANDUM
TO: Clients and Entrepreneurs
FROM: Morris, Manning & Martin, LLP
RE: Frequently Asked Questions (FAQs) about Patent Reform – The
Leahy-Smith America Invents Act of 2011 (“AIA”)
DATE: December 2011
___________________________________________________________________
This Frequently Asked Question (FAQ) memorandum addresses typical questions regarding
the new Leahy-Smith America Invents Act of 2011 (enacted September 16, 2011), and its
potential impact on patent application filing, patent enforcement, and patent litigation. This
document is authored by the Intellectual Property Group of Morris, Manning & Martin, LLP
(www.mmmlaw.com). Please note that there are additional questions that will be relevant in
this area and you should consult an IP attorney at MMM (contact information listed at the
end of this memorandum) with any other questions.
1. What is the main impact of the AIA?
Answer: The main impact of the America Invents Act (“AIA”) is expected to be an
increased urgency to file patent applications, due to the fact that the U.S. patent system will
now grant patents to the first inventor to file a patent application (“first to file”) instead of to
the “first to invent.”
2. What should I be doing now as a result of the AIA?
Answer: There are many potential effects of the AIA, but the most important effect on
patent applications is “file early, file often.” Because the AIA radically changes the priority
rules associated with patent filings, it is now more important than ever to file patent
applications as soon as possible. Also, because it is now potentially easier to challenge
issued patents (and submit prior art in pending applications), it is also important to monitor
the patent filings of your competitors.
3. Will the AIA improve the quality of U.S. patents?
Answer: It is not known at this time if the AIA will improve the quality of patents. Patent
quality is an elusive characteristic – what makes for a “quality” patent? There are no
objective measures as to the quality of a patent. The AIA is, however, supposed to improve
patent quality because of increased scrutiny of patent applications at the U.S. Patent and

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Trademark Office (USPTO) and new procedures for challenging patents outside of the
courts.
4. Will the AIA affect the patent lawsuits that are brought by patent “trolls” and non-
practicing entities (NPEs)?
Answer: It is not likely that the AIA will appreciably affect the incentives for NPEs (also
known as patent “trolls”) to bring lawsuits to enforce patents, at least for the immediate
future. The AIA includes a new joinder provision requiring that accused infringers in the
same lawsuit must be tied together by “the same accused product or process.” It is possible
that, in the longer term (more than 5 years out), the likelihood of success of lawsuits by NPEs
will decline due to a decreased number of patents that are issued. However, it will be a
number of years before the effects of the AIA on patent litigation will be fully felt and
realized.
5. Will the AIA make it any easier or less expensive to challenge patents outside of
courts?
Answer: Possibly. The AIA includes a number of reforms that are designed to provide new
and improved methods to challenge possibly invalid patents outside of the court system. The
AIA provides for new procedures in the USPTO for (a) Post-grant review, (b) Preissuance
Submissions, and (c) Supplemental Examination. These new procedures will add to the
USPTO bureaucracy, but are supposedly designed to help challenge suspect patents more
quickly and inexpensively.
6. Will the AIA cut back on the large damages awards that have been awarded in
many recent patent lawsuits?
Answer: No. The AIA includes no provisions that affect patent damages or awards. A
number of lobbyists had urged Congress to include patent damages limitations so that
companies could more readily manage their exposure to patent infringement claims.
However, for some reasons not completely understood, Congress failed to include the patent
damages limitations provisions that some companies felt were needed.
7. What is the biggest change to the U.S. patent system from the AIA?
Answer: Clearly, the biggest change to the U.S. patent system is the change from “first to
invent” to “first to file.” The change required a complete revision to the definition of prior
art. The revised definition greatly expands the nature of information and activities that bar
the grant of a valid patent to a patent applicant.

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8. Did the AIA change the basic requirements for obtaining a patent?
Answer: No. The primary requirements for patentability of (a) patentable subject matter, (b)
novelty, (c) nonobviousness, (d) a complete and enabling written description, and (e)
description of the best mode of practicing the invention – did not fundamentally change.
There are changes that affect the best mode requirement, but those changes are not expected
to have a major impact. A patent application under the AIA must still satisfy these basic
requirements. The novelty and nonobviousness requirements relate to “prior art,” whose
definition has been significantly altered.
9. What is the definition of “prior art” under the AIA?
Answer: The definition of prior art is fundamentally different under the AIA than under
previous laws. Prior art provides the evidentiary baseline for judging whether an invention is
novel and nonobvious, and thus entitled to be patented. In particular, the one-year “grace
period” has been eliminated for many types of prior art (see subsequent questions for more
details). This is a profound change. Prior art is now defined as other patents, printed
publications, on sale events, and public use events that predate a patent applicant’s effective
filing date. Many more types of information, both in the U.S. and in other countries, is now
available to cite against a patent application as evidence that a patent should not be granted
(or is invalid).
10. Did the AIA make any changes to the definition of patentable subject matter?
Answer: No. The primary categories of patentable subject matter are still (a) machines, (b)
manufactures (articles), (c) composition of matter, and (d) processes or methods. No
significant subject matter-related cases were overruled, such as the 2010 Bilski v. Kappos
decision, which affected business method and computer software patents.
11. Does the AIA eliminate business method patents?
Answer: No. There are no substantive provisions in the AIA that affect the way that the
USPTO receives or processes so-called “business method patents.” However, the AIA
includes a new 8-year program to address the validity of business method patents, using a
new procedure for challenging such patents at the USPTO. There is still much complexity in
determining what exactly is a “business method” patent.

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12. Did the AIA affect the availability or desirability of filing a “provisional” patent
application?
Answer: No. Provisional patent applications (PPAs) are still available under the AIA. The
requirements for a useful PPA remain the same. Patent applicants must still file a complete
written description of any invention that is to be claimed, although there is no requirement to
include any claims in a PPA. PPAs still present significant risks that a patent applicant will
not devote sufficient attention and work to providing a complete written description, so that
the benefits of a PPA may not be available.
13. What is the impact of the AIA on the “best mode” requirement?
Answer: Under current laws, a patent applicant is required to describe in the patent
application the “best mode” for making and practicing the invention. The AIA abolishes the
best mode requirement as a defense to patent infringement, but it requires that the best mode
still be described in patent applications. Specifically, the AIA amends the laws to eliminate
the best mode requirement as “a basis on which any claim of a patent may be canceled or
held invalid or otherwise unenforceable.” The overall impact of this seemingly conflicting
provision is not entirely clear.
14. Will the USPTO be able to improve its operations and efficiency and speed of
processing patent applications?
Answer: Probably, yes. The AIA included a provision that allows the USPTO to receive
increased funding for its operations, of about $300 million per year at current rates of
activity. However, Congress failed to grant the USPTO the right to retain all of the patent
fees that it receives to fund its operations, as many experts urged. Congress thus did not
completely end fee diversion – (a) the USPTO is appropriated funds to some extent by
Congress each year, (b) the USPTO can charge fees at increased rates, (c) collections in
excess of the appropriation are collected in a reserve fund, and (d) Congress could – perhaps
– allocate additional amounts of the reserve fund for USPTO operations.
15. What was the reason for changing from a “first to invent” system of granting
patents to “first to file”?
Answer: The reasons and policies for making this change are not clear. Since 1995,
Congress has attempted to make changes to the U.S. patent system so as to make our system
consistent with the patent systems of many other countries. This is called patent
harmonization. This was primarily to promote a concept that patent applicants would receive
the same treatment in the patent systems of all the different countries that were elected for

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international patenting efforts. It is far from clear that this change provides any benefits to
U.S. patent applicants, as the patent systems in most countries are less well developed and
consistent than the U.S. patent system.
16. What happened to the “grace period” under the old U.S. Patent Act?
Answer: The Patent Act of 1952 provided a grace period for filing a patent application.
This grace period was provided to the inventor to provide additional time for the inventor to
assess the value of the invention and workability of the technology before requiring
significant investment in the patent process. Specifically, this grace period provided the
inventor with a one-year time period from any public disclosure, offer for sale, or description
in a publication of the invention. Some aspects of the grace period remain under the AIA
(see next question), but they are more limited in scope.
17. What is the “modified grace period” under the AIA?
Answer: Under the AIA, a one-year grace period still applies for certain public disclosures
of the subject invention, so long as those disclosures were made by the inventor, or by
someone to whom the inventor disclosed the invention. Thus, disclosures by an inventor’s
competitors or others working on similar inventions could bar the inventor’s ability to obtain
a patent, even though the inventor actually invented the technology first.
18. When do the provisions of the AIA go into effect?
Answer: The AIA includes numerous provisions that are slated to go into effect at various
points from the date of the AIA’s enactment (September 16, 2011) until the last provision
goes into effect on March 16, 2013. For example, provisions such as the false marking
changes, new “best mode” requirements, prior user defense, and a 15% fee increase across
the board went into effect as soon as the AIA was signed into law. Other provisions such as
the new post-grant review procedures, the ability to file on behalf of an assignee (instead of
individual inventors), modifications to the inter-partes review proceedings, third party
submissions, and other provisions go into effect one year after the enactment of the AIA (i.e.,
on September 16, 2012). The “first to file” provisions, changes to the prior art rules, and
other significant provisions go into effect 18 months after the enactment of the AIA (i.e., on
March 16, 2013).
19. What is the “prior commercial user” defense now available under the AIA?
Answer: Prior “commercial use” of a patented method is recognized as a defense against
infringement under current law if certain conditions are met, and the AIA expands this
defense to include any “process, or consisting of a machine, manufacture, or composition of

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matter used in a manufacturing or other commercial process.” In order to rely on this
defense, the accused infringer must have, “acting in good faith, commercially used the
subject matter in the United States, either in connection with an internal commercial use or
an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of
such commercial use.” Other provisions apply as well.
20. Will it be easier to challenge a patent under the AIA once it has issued?
Answer: Possibly. The AIA replaces the current “reexamination” process with a new “post-
grant review” process that provides more grounds and opportunity for a patent to be
challenged within a limited time from its issuance. The new post-grant review process is
initiated by a petition to the USPTO that must be filed within nine months after the date of
patent grant or issuance of a reissue patent. The petition does not need to satisfy the familiar
“substantial new question of patentability requirement,” but rather must show that it is “more
likely than not that at least 1 of the claims challenged in the petition is unpatentable. There
are other aspects of this provision that expand the grounds for challenging an issued patent.
21. Will it be possible to challenge a pending patent application?
Answer: No, a third party cannot challenge a pending patent application. However, the
AIA does expand the window and content available for third party submissions of
information prior to issuance. These third party submissions will be considered by the
USPTO in granting a patent. Specifically, third parties can now submit “prior art” to the
USPTO before the earlier of either a notice of allowance of the pending application or the
later of 1) 6 months after publication of the patent application or 2) the date of the first
rejection during examination. When submitting prior art, the third party must provide a
description of the relevance of each document along with a fee.
22. What is “false marking” and how was it affected by the AIA?
Answer: Generally, “false marking” relates to the concept of marking a product, machine,
or other invention as “patented” (or providing a patent number) when in fact the product was
never patented. Recently, some cases made it easier to sue for false marking offenses, even
in circumstances in which a product was initially validly marked, but then the product
continued to be marked as patented even after the underlying patent had expired. The AIA
has essentially put an end to these (sometimes frivolous and unfounded) lawsuits, by making
it more difficult to sue for false marking.

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23. Is it now easier under the AIA to “mark” my products as patented?
Answer: Yes. The AIA introduces “virtual marking” as a way to satisfy the public notice
marking requirement. Virtual marks are statements on products or product packaging that
direct the reader to a publicly accessible website, where the patent numbers relevant to the
product are listed. Parties are exempt from liability for false marking after a patent expires if
the product or package uses a virtual mark.
24. Can a company now file a patent application in its own name instead of naming
individual inventors?
Answer: Yes. If an inventor or inventors have assigned their rights in an invention to an
assignee, then the assignee will now be able to file the patent application in its name only.
This new provision should make it easier in some respects for companies to file patent
applications on behalf of its employees.
25. What is the “transitional program for covered business methods”?
Answer: The AIA includes a new bureaucratic process designed to help challenge business
method patents, but it does not cover “technological” inventions (whatever those might be).
This process is similar to the new post-grant review procedures, discussed above. It may not
be clear for some time what is a “technological” invention in the area of business methods
patent.
26. Will I receive any reduction in USPTO fees under the AIA?
Answer: Possibly. Under the current laws, “small entities” (generally businesses with less
than 500 employees, or universities, individuals, etc.) are entitled to a 50% reduction in fees.
The AIA defines a new category of applicants called “micro entities” that receive a 75%
reduction in filing fees, extension fees, maintenance fees, and the like. These micro entities
generally include small entities that do not exceed some threshold requirements in terms of
number of patent applications filed, gross income, and other factors.
27. Will the AIA speed up the patent examination process?
Answer: Yes, in some limited circumstances. The AIA allows for “prioritized examination”
for a certain limited number of applicants that meet certain requirements. To qualify for
prioritized examination, the applicant must pay greatly-increased filing fees ($4,800), there
are limits on the total number of claims that can be submitted, the application must be
complete as of the time of filing (i.e., all declaration and supporting documents must be

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present at the time of filing), and other requirements must be met. Final disposition of the
application should occur within twelve (12) months of filing.
28. Did the AIA change the standard for “willful infringement”?
Answer: No. The AIA has codified the recent standard set forth in the In re Seagate
opinion. Under Seagate (and now the AIA), a party cannot be held liable for willfully
infringing a patent (and thus be subject to triple damages) simply because the party failed to
obtain a legal opinion of non-infringement once the party became aware of the possible
infringement. It is worth noting, however, that although a party cannot be held liable for
willful infringement, failure to seek an opinion of non-infringement can impact the overall
damage award in a lawsuit.
29. Did the AIA affect the way that patents are examined and granted by the USPTO?
Answer: Not immediately, but eventually. The USPTO should have more resources
(money) available under the AIA, and will likely hire more examiners, and will establish
satellite offices, etc. But, the law included no substantive provisions on how the USPTO
should conduct its business from a substantive perspective. A number of new regulations for
patent processing and handling will be issued in the upcoming months to implement various
AIA provisions. These new regulations will inevitably change some aspects of the patent
process.
*****
For more information regarding any of the above-listed questions, or any others relating to
patents or intellectual property, please contact one of the following attorneys in the MMM IP
Group:
John R. Harris - 404-504-7720 - jharris@mmmlaw.com
Tim T. Xia – 404-495-3678 - txia@mmmlaw.com
Chris Raimund – 202-216-4816 - craimund@mmmlaw.com
Daniel E. Sineway - 404-364-7421 - dsineway@mmmlaw.com