America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice


On Monday, I attended PLI’s  program on the America Invents Act via webcast.  For those of you who were lucky enough to attend it, I’m sure you would agree  that the panel of experts delivered an extremely informative and concise program.  As I listened to each speaker deliver his/her presentation, it confirmed that the AIA is a major overhaul of the U.S. patent law.  It’s going to take quite some time for the patent community to really get a handle on all the nuances of the legislation.  With that being said, Monday’s esteemed panel did an excellent job breaking down the various provisions in AIA and helping to make sense of  how it pertains to your patent practice.  According to Gene Quinn, of IPWatchdog and Patent Center Contributor, PLI is considering reprising the presentation for an audience at PLI’s New York City location. Keep you posted.  

In the meantime, here are some highlights from Robert A. Armitage’s, of Eli Lilly and Company, presentation entitled “A New 102: Reform, Not Recodification”….

-AIA leaves only a 4-prong set of requirements for patentability-

  1. Sufficient differentiation from prior public disclosures and earlier patent filings of others.
  2. Sufficient disclosure to identify the claimed embodiments and to enable them to be put to a specific, practical, and substantial use.
  3. Sufficient definiteness to differentiate subject matter claimed from subject matter that is not.
  4. Sufficient concreteness to avoid excessively conceptual or otherwise abstract subject matter.

-Collectively, the patentability changes have profound implications

  1. Highly transpartent patentability standards.
  2. Solely objective criteria for patentability.
  3. More predictable assessments of patentability.
  4. Greatly simplified tests for patentability.
  5. Repeal of the following as prior art – loss of right:

-§102(b) “in public use or on sale” forfeture.
-§102(c) “abandonment.”
-§102(d) premature foreign patenting.
-§102(f) personal knowledge of another
-§102(g) prior inventions
-§112(a) “best mode” – gone for invalidity/unenforceability.

-A single “prior art” definition for both novely and non-obviousness

  1. §102(a)(1) public disclosures – subject matter made available to the public by any means.
  2. §102(a)(2) earlier U.S. patent filings later published – information available to the public.
  3. Inventor – and collaboration-friendly features:

-1 Year inventor’s grace period is not changed.
-Co-workers’ and collaborators’ earlier patent filings not prior art – including for novelty purposes.
-The “grace period” perfected for an inventor who makes the first public disclosure of an invention.

-AIA creates no-fault “inventorship” naming; no “mal-joinder” invalidity

  1. Filing permitted by the assignee as the patent applicant, not merely the inventor.
  2. Inventor’s oath required, but with “savings clause” and can include in the assignment.
  3. Inventorship correction irrespective of an original naming involving “deceptive intent.”
  4. Collection of changes on inventor naming can remove misjoinder/non-joinder as validity issue – will merely determine ownership.

-AIA allows USPTO to consider addditonal/corrected information –

  1. Patent owner can ask for “supplemental examination” to consider new or corrected information; if a validity issue is raised, the USPTO will reexamine the patent.
  2. Prompt elimination of invalid patent claims.
  3. No inequitable conduct allegations can be based upon the information considered, reconsidered, or corrected during a suppplemental examination.
  4. Provides an alternative to having a court consider misconduct and validity issues in a later patent infringement litigation.

-AIA post-grant review and inter partes review: new patent quality initiatives

  1. PGR = all issues of patent invalidity.
  2. IPR = patents/publications; nonobviousness.
  3. Administrative patent judges render final decision within 1 year from institution.
  4. Requires a t-o-p-s patent law substrate.
  5. Will greatly accelerate development of patent law in areas of technology new to patenting.

-“Best Mode” requirement is wholly finished as an invalidity defense – applies to all patent litigation commenced after the enactment of the AIA.

-Best Mode disclosure not required for provisional priority or §120 benefit of prior filing. Nothing in the new statute addresses foreign priority claims specifically or disturbs the Transco decision that priority/parent disclosure of “best mode” suffices without the need to update.

-Definitions become an important part of the patent statute – concerted effort to better clarify the patent statute, greater readability and less ambiquity.  New statute takes on definitions for “inventor”, “joint inventor”, “effective filing date”, “effectively filed”, and “claimed invention”.

-First-inventor-to-file patents can still be subject to existing §102(g) –

  1. An application, although fully subject to all first-inventor-to-file provisions of new §102, is subject to existing §102(g) if the application at any time contained a claim iwth an effective filing date before March 16, 2013.
  2. A claim for benefit of any application that at any time contained such a claim.
  3. EFFECT: Inventor is subject to §102(g) prior inventions and cannot rely on a date of invention to overcome §102(a) and §102(e) prior art.

-Patent Filing Strategies: Number, Content, and Timing

  1. Pre-Transition patent filing strategies based on practical need to be the first-inventor-to-file and legal need for an adequate patent disclosure.
  2. Transitional patenting strategies will account for: huge advantage by avoiding “mixed priorities. Waiting will shed all “loss of right to patent” issues and prior inventions as prior art.
  3. Post-transition patent filing strategies: same as pre-transition patent filing strategies; key drivers for patent filing are largely unchanged.

-“Prior art” is now transparent, objective, and simple.  Should lead to more predictability.

-Inventor/collaboration-friendly aspects of U.S. patent law retained and improved.

-Transition should not impact any aspect of patenting strategies, except for the need to avoid “mixed priorities”.

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One Response to “America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice”

  1. […] In a previous post, I highlighted the key points from Robert A. Armitage’s, of Eli Lilly and Company, presentation entitled ”A New 102: Reform, Not Recodification”.  Here are highlights from Janet Gongola’s, Patent Reform Coordinator at the USPTO, presentation entitled “USPTO Implementation of the America Invents Act”. […]

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