What is the difference between pre-AIA and AIA patent ownership rules?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
The America Invents Act (AIA) brought significant changes to patent law, including rules regarding patent ownership. The key differences between pre-AIA (before September 16, 2012) and AIA (on or after September 16, 2012) patent ownership rules are:
- Applicability: Pre-AIA rules apply to applications filed before September 16, 2012, while AIA rules apply to applications filed on or after that date.
- Juristic Entity Representation: Under AIA rules, juristic entities (e.g., corporations) must be represented by a patent practitioner for most actions. Pre-AIA rules allowed juristic entities to take certain actions without representation.
- Ownership Establishment: The process for establishing ownership is slightly different, with AIA applications following 37 CFR 3.73 and pre-AIA applications following pre-AIA 37 CFR 3.73(b).
- Inventor’s Oath or Declaration: AIA introduced changes to the inventor’s oath or declaration requirements, which can affect how assignees interact with the patent application process.
According to MPEP 324: [Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.]
This indicates that different sections of the MPEP should be consulted depending on the application’s filing date.
For more information on pre-AIA, visit: pre-AIA.
For more information on USPTO procedures, visit: USPTO procedures.