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USPTO UPDATE: Leahy-Smith America Invents Act (AIA) Changes Effective March 16, 2013 - New Fees To Take Effect March 19, 2013

January 29, 2013

Significant changes to U.S. patent law are scheduled to take effect on March 16, 2013. For example, one of the most significant changes is the switch from a first-to-invent system to a first-inventor-to-file system. Consequently, for applications that contain claims to subject matter filed at the U.S. Patent and Trademark Office (USPTO) on or after March 16, inventors will no longer be able to show that they were the first to “invent” their invention to overcome most rejections based on prior art. Further changes will result in an increase in the scope of prior art that can be cited against applications, including applicant’s own activities; for example ‘public use’ or ‘sale’ activities occurring anywhere will become citable, while under the present standard only those activities occurring in the U.S. are citable.

In light of these significant changes, we strongly recommend that you review your intellectual property portfolio and consider whether (i) you have any technology that would require filing of a new patent application; (ii) you have existing provisional patent applications that need to be converted into regular U.S. patent applications or PCT patent applications; and (iii) you have existing regular patent applications for which you may want to add claims to subject matter for which there may not be enabling support in the present application as filed. If any of these situations exist for your portfolio, we suggest that you contact us for further information about whether or not it would be beneficial to act prior to March 16, 2013.

As part of their new fee setting authority provided under the AIA, the USPTO also recently announced significant changes to its fee structure, the majority of which will take effect on March 19, 2013. Some of the fees that will see a significant increase are the basic utility examination fee, excess claim fees, extension of time fees, appeal fees, maintenance fees and fees for Requests for Continued Prosecution. For example, the overall fee for filing an application is increasing by 47%, and the fees for paying maintenance fees are increasing by 26 – 61% (with the fee for paying the third maintenance increasing by 61%, to US$2,870 at the full rate). Again, if your intellectual property portfolio requires an action where one or more of these fees will need to be paid, please contact us to determine if the action can be taken, and corresponding fees paid, prior to the implementation of any increases.

Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.


H. Samuel Frost H. Samuel Frost
B.A. (Eng. Sci.), M.Sc. (Nucl. Eng.)
905.817.6100  email H. Samuel Frost
Patricia Folkins Patricia Folkins
B.Sc. (Honours Chem.), Ph.D. (Org. Chem.)
905.817.6101  email Patricia Folkins