President Obama last Friday signed into law the America Invents Act (“AIA”) at a Virginia school. The AIA is a serious overhaul of United States patent law in over 60 years. The recent changes to the US patent law makes it more-in-sync with global patent laws, the changes are intended to bolster innovation and economic development. There are large number of revisions in the AIA that seek to redress perceived problems with the previous law, reduce administrative and litigation costs, bring patent law more in line with global norms and increase certainty about patent laws. This post gives a brief overview of the AIA and provides certain implications for inventors globally. Notable changes: (1) ownership of inventions to be given to inventors who file their applications first (first inventor to file) rather than those who conceive of their inventions first (changes to section 102 and 103); (2) infringers of technology for which others later obtain patents may continue to use the technology under significantly more liberal conditions (section 273); (3) Failure to take professional advise may not be used to prove intent or induce or willfulness (section 298); accused infringers better protected from charges of willful infringement when they do not seek advice from counsel; (4) third parties empowered to challenge patents or applications under many conditions (sections 257, 301, 321-329). (5) There cannot be any more qui tam actions (Section 292) as only the US can sue under section 292; this would put an end to a large number of false marketing cases brought by individuals; (6) There is an increase the fees (15%)across the board-result increased cost of patenting.
Critics argue that some of the changes, particularly the first to file provision, disadvantage small businesses and/or individual inventors with fewer resources. It is argued that small inventors have a major role in spurring innovation. With the passage of the AIA, such arguments have been discounted. A large number of ambiguities remain and only time will tell whether or not they are well founded. It is most likely that removal of these ambiguities would be left to the courts.
Implications for inventors: (1) Most practitioners would agree with me that the AIA would result in a comparatively larger number of provisional applications being filed. The reason is that an inventor needs to show that she was the first to file: and that can be shown by filing a provisional; (2) I should add here that the provisional application should disclose to a person skilled in the art the invention, i.e. the non-provisional application should not contain new material but should be based on the material in the provisional; (3) I expect that the US examination would be more stringent comparatively as examiners are likely to look for support in the provisional application, if any. This (looking for support in the provisional) would be in conformity to the practice at the European, Chinese and Korean patent offices.
EPO, CIPO and the KIPO work differently than the USPTO. How would the AIA bring it more in line with these offices?
First inventor to file is appreciated. This essentially harmonizes with the patent laws of other jurisdictions. Swearing behind the reference is also ruled out.
There are some more significant changes like the act has widened the scope of prior art and added a new review procedure for post grant opposition in addition to the existing re-examination.
However, I am unable to understand the logic behind eliminating ‘best mode” as a ground for invalidating and canceling the patent where actually it remains the ground for office examination.
There are a few helpful provisions in this bill — for instance, “competitive injury” and dis-joinder clauses — that could contribute to reducing negative consequences of patent troll behavior. And, doubtless, those at the USPTO are looking forward to their increase in fees. But, from what I can tell, the rest of this bill is not that helpful; what almost everyone had wanted was a bill ending the diversion of USPTO fees to Congress. Congress, however, eliminated that provision at the last minute, leaving a gutted piece of legislation that seems to please no one except large corporations.