What Is the American Inventors Protection Act?

The American Inventors Protection Act of 1999 is a federal law, enacted as part of the Intellectual Property and Communications Omnibus Reform Act, that rewrote several core pieces of U.S. patent practice to bring the system closer to how the rest of the world handles patents.¹ Its six subtitles required most patent applications to be published 18 months after filing, guaranteed extra patent term when the USPTO caused delay, created a defense for people already commercially using an invention before someone else patented it, imposed disclosure rules on invention promotion firms, and set up an inter partes reexamination procedure for challenging issued patents. Several of these pieces were later refined by the Leahy-Smith America Invents Act of 2011, and a few no longer exist in their original form.

Publication of Patent Applications at 18 Months

Before 1999, a U.S. patent application stayed confidential until the patent issued, which could be years after filing. The Act changed that. The USPTO now publishes most applications 18 months after the earliest filing date for which the applicant claims priority.² That timing matches the practice already used in Europe, Japan, and most other major patent offices.p>

You can keep an application confidential past 18 months, but only under narrow conditions. A non-publication request has to be filed at the time of your initial filing, and you have to certify that the invention will not also be filed in any foreign country or under any international agreement that requires 18-month publication. If you change your mind and file abroad later, you have 45 days from that foreign filing to notify the USPTO. Miss the 45-day window or make a false certification up front, and the application is treated as abandoned.³

You can also ask the USPTO to publish earlier than 18 months by paying the publication fee and filing a request under the applicable regulations.⁴ The reason to do that has to do with provisional rights.

Provisional Royalties Between Publication and Issuance

Publication does more than tell the public what you’re up to. It gives you a limited right to collect a reasonable royalty from anyone who copies the invention during the gap between publication and the patent actually issuing. That right sits in 35 U.S.C. § 154(d), and it comes with two conditions. The infringer must have had actual notice of the published application, and the claims in the final patent must be substantially identical to the claims as published.⁵

The “substantially identical” condition is where most of these claims fall apart. If your claims get significantly amended during examination, the final patent no longer matches what was published, and the pre-issuance royalty right disappears. A lawsuit to collect these royalties has to be filed within six years after the patent issues.⁵ Requesting early publication starts that clock sooner.

Patent Term Adjustment for USPTO Delay

The standard patent term is 20 years from the filing date. USPTO processing delays can eat into that. Patent term adjustment (PTA), created by the Act at 35 U.S.C. § 154(b), adds time back to the term, day for day, when the agency causes specific kinds of delay.

The statute recognizes three categories of compensable delay. The first covers slow USPTO responses: the term is extended one day for each day the USPTO exceeds any of four deadlines, including issuing a first office action within 14 months of filing, responding to an applicant’s reply or appeal within four months, acting on an application within four months of a board or court decision, and issuing the patent within four months after the issue fee is paid.⁵ The second covers overall pendency: if the USPTO fails to issue a patent within three years of the actual filing date, the term is extended one day for each day past that mark, though time spent on requests for continued examination, appeals, and applicant-requested delays is excluded from the calculation. The third covers delays from derivation proceedings, secrecy orders, and successful appeals.⁶

PTA runs both ways. Any period during which the applicant failed to make reasonable efforts to move prosecution forward reduces the adjustment. The most common reduction: taking more than three months to respond to a USPTO action. Every day beyond three months comes off your PTA. Requesting suspension of examination, abandoning and reviving, filing a request for continued examination after a notice of allowance, and submitting supplemental papers the examiner didn’t ask for also cut into the adjustment.⁷

PTA carries real money in industries with long regulatory approval timelines. In pharmaceuticals and biotech, an extra few months of patent term can be worth hundreds of millions of dollars, and disputes between applicants and the USPTO over PTA calculations end up in federal court with some regularity.

Disclosure Rules for Invention Promoters

The Inventors’ Rights Act subtitle, at 35 U.S.C. § 297, targets firms that charge independent inventors thousands of dollars for evaluation and marketing services while delivering little in return. Before signing a contract, an invention promoter has to give the customer a written disclosure showing how many inventions the firm has evaluated, how many received positive reviews, and how many customers actually earned more in royalties or licensing revenue than they paid for the services.⁸

If a promoter makes a false or fraudulent statement, omits a material fact, or fails to provide the required disclosures, the customer can sue for actual damages or, in the alternative, statutory damages of up to $5,000. If the court finds the promoter intentionally misrepresented or omitted material information to deceive the customer, damages can be tripled. Reasonable attorney fees and costs are also recoverable.⁸ The treble-damages provision gives an individual inventor enough potential recovery to attract a lawyer, which matters when the other side is a well-funded promotion firm.

Some states layer their own requirements on top of the federal rules, including surety bonds and cancellation rights. Check state law before signing anything.

Prior User Rights Defense

The First Inventor Defense Act subtitle, at 35 U.S.C. § 273, created a shield for someone who was already commercially using an invention before another party patented it. As originally enacted, the defense applied only to patents on methods of doing business, and the defendant had to show they reduced the method to practice at least one year before the patent’s filing date and made commercial use of it in the United States before that date.⁹

The America Invents Act expanded the defense in 2011. It now reaches any technology used in a commercial process, not just business methods. The expansion was tied to the AIA’s shift from first-to-invent to first-inventor-to-file, since a filing-priority system would otherwise punish companies that innovated quietly without racing to file.¹⁰

The defense has real limits. It’s personal to the user: you can’t license or sell it separately, and it transfers only as part of a good-faith sale of the entire business or line of business that uses the invention.⁹ It covers only the specific sites where the invention was used before the critical date; you cannot roll the same process out to a new plant under its protection. The prior user has to establish the defense by clear and convincing evidence, a higher bar than the usual preponderance standard. And the defense cannot be used at all against patents owned by or assigned to universities or their affiliated technology transfer organizations.¹⁰

The geographic limit is the one that catches companies out. Using a patented process at an Ohio plant before the filing date protects continued use at that Ohio plant. It doesn’t let you open a Texas plant on the same theory. Companies planning to rely on the defense should keep timestamped internal records and dated purchase orders. That documentation is what makes a prior-use argument stand up.

The Inter Partes Reexamination Piece No Longer Exists

One caution about the 1999 Act: the inter partes reexamination procedure it created at 35 U.S.C. §§ 311–318, which let third parties challenge already-issued patents, no longer exists in its original form. The America Invents Act replaced it with inter partes review (IPR) effective September 16, 2012. The USPTO stopped accepting reexamination requests on that date and began accepting IPR petitions instead.¹¹ IPR runs before the Patent Trial and Appeal Board under trial-like procedures, and current USPTO fees for a petition challenging up to 20 claims come to $23,750 at filing plus $28,125 post-institution.¹² If you’re researching how to challenge a patent today, the AIPA’s reexamination provisions are a dead end; the current path is IPR.

1
United States Patent and Trademark Office. American Inventors Protection Act – Summary
2
Office of the Law Revision Counsel. 35 USC 122 – Confidential Status of Applications; Publication of Patent Applications
3
Office of the Law Revision Counsel. 35 USC 122 – Confidential Status of Applications; Publication of Patent Applications
4
United States Patent and Trademark Office. MPEP Section 1129 – Request for Early Publication
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Office of the Law Revision Counsel. 35 USC 154 – Contents and Term of Patent; Provisional Rights
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United States Patent and Trademark Office. Explanation of Patent Term Adjustment Calculation
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eCFR. 37 CFR 1.704 – Reduction of Period of Adjustment of Patent Term
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Office of the Law Revision Counsel. 35 USC 297 – Improper and Deceptive Invention Promotion
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Office of the Law Revision Counsel. 35 USC 273 – Defense to Infringement Based on Prior Commercial Use
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United States Patent and Trademark Office. Report on the Prior User Rights Defense
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United States Patent and Trademark Office. MPEP 2601 – Introduction
12
Federal Register. Setting and Adjusting Patent Fees During Fiscal Year 2025