Joseph M. Potenza is chair of the ABA Section of Intellectual Property Law. He is a senior shareholder of the intellectual property law firm Banner & Witcoff, Ltd., in Washington, D.C. He can be reached at email@example.com.
The Leahy-Smith America Invents Act (AIA) brought about some of the most dramatic changes to U.S. patent law since the Patent Act of 1836, and perhaps even since the original 1790 Patent Act. On September 16, 2011, President Obama signed H.R. 1249 into law (Public Law 112-29).
The AIA has a nominal effective date of one year after enactment, but this general effective date is overridden in many instances by effective dates applicable to individual provisions. A number of self-executing provisions became effective immediately upon signing of the law, with no need for development of regulatory or administrative mechanisms. Included in this category were substantive law changes that prohibit patenting of tax strategies, putting an end to bounty hunter suits for false marking of patents, eliminating failure to comply with the best mode requirement as a defense to infringement, and changing venue of certain patent-related suits from the U.S. District Court for the District of Columbia to the Eastern District of Virginia.
Other important provisions are phased in over the 18-month period following signing, and require extensive rulemaking or program development before implementation. Last to become effective, and in the view of many the most significant change, is the transition of the United States to a first-inventor-to-file system, beginning on March 16, 2013.
As many readers will appreciate, the reforms embodied in the AIA did not occur overnight. Over the span of six years, numerous bills were introduced in the House and Senate with varying success. At times along the way, patent reform seemed to be on the verge of collapse as private sector stakeholders remained in deadlocked disagreement on key provisions. As the 112th Congress began in 2011, Senate Judiciary Chairman Patrick Leahy, who had led unsuccessful efforts for patent reform from the beginning, vowed to abandon the effort if it failed in the 112th Congress.
As mentioned in my article in the September/October 2012 issue of Landslide® magazine, ABA Section of Intellectual Property Law (ABA-IPL) leaders played an indispensable role in ultimately securing passage of the AIA through both houses of Congress.
But unlike the years-long legislative process, once the AIA was enacted, the U.S. Patent and Trademark Office (USPTO) was forced to quickly implement regulations in time for the AIA’s effective dates. The ABA-IPL Section has taken an active role in the AIA rulemaking process, having submitted comments to the USPTO on a number of proposed rules, including First Inventor to File; Inter Partes Review, Post-Grant Review and Transitional Program for Business Method Patents; Preissuance Submissions by Third Parties; Statute of Limitations Provisions for Office Disciplinary Proceedings; Inventor’s Oath or Declaration Provisions; and Proposed Patent Fee Schedule.
The AIA introduced a number of new concepts to U.S. patent law, such as direct filing of patent applications by the assignee rather than the inventor. The USPTO wrestled with this concept and initially proposed regulations that would have limited its applicability to situations where the inventor is unavailable or unwilling to execute the application. Responding to comments from the Section and others that offered a broader view of the AIA’s purposes, the USPTO ultimately promulgated final rules that allow all applications to be filed in the name of the assignee, harmonizing U.S. practice with that of other countries.
One key provision of the AIA that took effect on September 16, 2012, is Inter Partes Review (IPR), replacing Inter Partes Reexamination. Unlike the former procedure, IPR will be conducted by the newly-named Patent Trial and Appeal Board (PTAB), instead of the examining corps. With the PTAB handling the initial procedure, appeals go directly to the Federal Circuit, thereby eliminating an intermediate appeal within the agency. Thus far, IPR has been a popular venue for challenging patents, with dozens of petitions already having been filed in the several weeks since the inception of the procedure.
Another provision that went into effect on September 16, 2012, allows members of the public to present to the USPTO information that may impact patentability of a specific application. This disclosure, referred to as a third-party preissuance submission, allows nonapplicants the ability to contribute to the quality of examination by submitting patents, published patent applications, or other printed publications, together with a description of how the submitted documents are potentially relevant to examination. This too appears to be a popular procedure in its early stages, with the USPTO reportedly receiving a “steady stream of preissuance submissions” since September 16.
While the AIA will change the U.S. to a first-inventor-to-file (FIF) system in 2013, it preserves a version of the one-year grace period that, among other things, allows an applicant to rely on its own earlier publication of the invention to disqualify an intervening third-party publication. At first blush, this provision of the AIA may seem to resemble the pre-AIA practice that allowed an applicant to swear behind a nonstatutory bar reference. However, the USPTO’s proposed rules take a narrow view, allowing the third-party publication to be disqualified only when it describes the “same subject matter” described in the applicant’s earlier publication. As reflected in its comments submitted to the USPTO, the ABA-IPL Section supports this interpretation, although it urged that “same subject matter” should be an anticipation standard rather than an ipsis verbis standard to best promote the AIA’s policies of encouraging both innovation and early patent filing.
As part of the transition to the FIF system, USPTO personnel will need to determine whether to treat applications under the AIA or pre-AIA prior art rules. Applications in which all claims have an effective filing date prior to March 16, 2013, will continue to be treated under the pre-AIA prior art rules, whereas applications in which one or more claims has an effective filing date of March 16, 2013, or later will be treated under the new AIA prior art rules. The USPTO’s proposed FIF rules would require applicants to make a statement as to whether any claim in the application has an effective filing date on or after March 16, 2013. In its comments to the USPTO, the ABA-IPL Section opposed this requirement, arguing that the rule would present an undue burden on applicants and is over-inclusive, since it only would be needed for a small number of transitional applications.
Another new provision of the AIA will allow third parties to file a request for Post-Grant Review (PGR) within nine months of a patent’s issuance, challenging the patent on either prior art or non-prior art grounds (except best mode). PGR proceedings will be handled by the PTAB and will become available for all patents having an effective filing date on or after March 16, 2013. Provisions establishing the PGR program and a related Transitional Program for Covered Business Method Patents went into effect on September 16, 2012. The PTAB additionally will handle derivation proceedings, which replace interferences as the first-to-invent system is phased out.
This is only a snapshot of some of the changes brought on by the AIA that are in place or in the works. I encourage you to visit the Section’s website, www.americanbar.org/iplaw, to learn more about our ongoing involvement in the implementation of the AIA, and to participate in some way if you are not already doing so. Truly, these are exciting times to be practicing intellectual property law and participating as members of this Section.