AIA Studies and Reports

The AIA Studies and Reports area features information about studies and report required by the AIA.

 

International Protection for Small Business

Congress directs the USPTO to study international patent protection for small businesses in consultation with the Department of Commerce and the Small Business Administration. This study will examine how USPTO and other Federal agencies can best help small businesses with patent protection overseas, including whether a loan or grant program should be established to help small businesses cover the costs of application, maintenance, and enforcement fees or related technical assistance. Within 120 days of the date of enactment of the AIA, i.e., by January 14, 2011, USPTO must submit its report to Congress on the results of this study, along with a recommendation on establishing a loan or grant program and any other legislative recommendations arising from the study.

 

Prior User Rights

Congress directs the USPTO to study the operation of prior user rights in other industrialized countries in consultation with the United States Trade Representative, the Secretary of State, and the Attorney General. This study will include a comparison of patent laws between the United States and members of the European Union, Japan, Canada, and Australia; the effects of prior user rights on innovation, startups, and venture capital; any legal issues that arise with trade secret law; and the impact of switching to a first-to-file patent system. Not later than the end of the four-month period beginning on the date of enactment of the AIA, i.e., by January 16, 2012, the USPTO must submit its report to Congress on the results of this study.

 

Genetic Testing

Congress directs USPTO to study effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. This study includes examining the impact that independent second opinion testing has on providing medical care to patients; the effect that providing independent second opinion genetic diagnostic testing would have on the existing patent and license holders of an exclusive genetic test; the impact of current practices on testing results and performance; and the role of insurance coverage on the provision of genetic diagnostic tests. Within nine months of enactment of the AIA, i.e., by June 16, 2012, the USPTO must report to Congress the findings of the study and provide recommendations for establishing the availability of independent confirming genetic diagnostic test activity.

On August 28, 2012, the Department of Commerce sent a letter to the House and Senate Judiciary Committee leadership updating them on the status of the genetic testing report. The letter stated in part: "Given the complexity and diversity of the opinions, comments and suggestions provided by interested parties, and the important policy considerations involved, we believe that further review, discussion and analysis are required before a final report can be submitted to Congress." To that end, the USPTO plans to organize an additional public hearing in late Fall 2012, review the comments received during the last year, and then finalize its recommendations to Congress.

 

Effects of First-to-File on Small Business

Congress requires the Small Business Administration in consultation with the USPTO to study the effects of switching to a first-to-file patent system on small businesses. In particular, the study will examine how the change affects small businesses' ability to obtain patents, any advantages or disadvantages the system creates for small businesses, and cost savings or other potential benefits. The USPTO must submit a report on the results of the study to Congress within one year from the date of enactment of the AIA, i.e., by September 16, 2012.

Patent Litigation

Congress requires the Government Accountability Office (GAO) to study the consequences of patent litigation by non-practicing entities (NPEs) or patent assertion entities (PAEs) in consultation with the USPTO. This study will include the volume of litigation in the 20 years before enactment of the AIA, the volume of cases which are found to be without merit after judicial review, the impact of litigation on the time to resolve patent claims, the costs with such litigation, its economic impact on the U.S. economy and job creation, and any benefits created by NPEs or PAEs. Within one year from the date of enactment of the AIA, i.e., by September 16, 2012, the GAO must report to Congress the results of this study, including recommendations to minimize any negative impact of such patent litigation.

Misconduct before the Office

Congress requires the USPTO to report every two years on incidents of misconduct before the Office that could not be pursued due to the new statute of limitations in 35 U.S.C. § 32. These limitations bar disciplinary proceedings for events which happened more than 10 years ago or for which the Office knew about the misconduct more than one year before taking action.

 

Satellite Offices

Congress requires the USPTO to establish three satellite offices within three years of the date of enactment. The purposes of these satellite offices are to increase outreach activities, enhance employee retention, improve recruiting, decrease the application backlog, and improve examination quality. In choosing office locations, the USPTO must consider creating geographic diversity, recruiting a technically skilled workforce at low cost, and the economic impact on the region. By the end of the third fiscal year after enactment of the AIA, i.e., by September 30, 2014, the USPTO must report to Congress on its rationale for selecting satellite office locations, including progress on establishing satellite offices, how the required purposes and considerations were addressed, and whether the statutory purposes are being achieved.

Virtual Marking

Congress directs the USPTO to submit a report on virtual marking not later than the date that this is three years after enactment of the AIA, i.e., by September 16, 2014. This report will analyze the effectiveness of the new virtual marking provisions of 35 U.S.C. 287(a), which allows patent owners to mark their products with an internet address that provides the patent numbers associated with the product. The report will also analyze the impact of such virtual marking on public access to patent information and any issues (legal or otherwise) which virtual marking creates.

 

Implementation of AIA

Congress requires USPTO to study how the Act is being implemented by the Office as well as other aspects of the Federal Government's patent policies and practices, including their effect on innovation, competitiveness in the U.S., and access to capital for small business investment. Within four years of enactment of the AIA, i.e., by September 16, 2015, the USPTO must report to Congress on the results of this study, including any recommendations for changing patent laws and regulations.

Report on Implementation of the AIA (September 2015)

 

 

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