A Guide to the Legislative History of the America Invents Act: Part II of II

Abstract

This article is the second in a two-part series examining the origins and the legislative commentary on the provisions of the Leahy-Smith America Invents Act. This second article addresses the AIA's enactment of a prior-user right, its repeal of the false-marking qui tam action and the best-mode defense and the 1952 Act's deceptive-intent restrictions, its authorization of supplemental examination and post-grant review of patents and special review of business-method patents, its revisions to inter partes proceedings, its limits on joinder of defendants and on use of evidence relating to advice of counsel, its authorization of virtual marking of patents, and its modification of the deadline for seeking a patent-term extension. The article is organized by the sections of title 35 that are significantly amended by the AIA, and then by the uncodified sections of the AIA.

Keywords: law, patents, America Invents Act, business methods, post-grant review, inequitable conduct, marking, joinder

JEL Classification: O34