The America Invents Act: One Year Later (conference)

By Jason Rantanen

Liveblogging the America Invents Act: One Year Later conference at the Indiana University Mauer School of Law.   Warning and disclaimer: Quality may vary and these don't necessary reflect my opinions.

Session 1:

Mark Janis – opening remarks.  Hard to believe it's been a year act since AIA was signed.  Still at the beginning of understanding the AIA provisions.  Exciting times.  Lots of patent law thought leaders here today – Bob Armitage, Director K appos. 

Come back in ten days for the next conference.

Bob Armitage – wants to the the upbeat, inspirational speaker that we all need at 8:30 am. 

Some things that need to be done with the AIA in terms of legislative correction of errors.  Suggests that different constituencies in patent law work together on this goal in the immediate future – before the next election.

The AIA is the most profound change to the patent system since 1836 patent statute.  He's been involved in the process of patent reform for the last 30 years.  Shortly after he left law school, he realized that we had a law school that we had a patent system that didn't work very well.  Some of the things that we needed to do to improve the patent system was to eliminate first to invent, have a more transparent grace period, and eliminate recurring patent terms. 

Sees the AIA as major constituencies coming together to move the patent system in the direction of transparency and objectivity.  If the implementation of the AIA goes well, this is the patent system we'll have.  A more predictable patent system.  Much of this comes down to invalidity defenses – under the AIA these are much simpler. 

We were the last to the table in terms of modernizing our patent system.  Prior 1999, we really had a secret patent system. With the AIA, the patent system was opened up even further.  After AIA, there's no-fault correction of misnaming of inventors; the technical filing of an affidavit that mis-names the inventor is no longer a worry; best mode is no longer a concern for patent applicants; patent prosecutors are better off because of supplemental examination.  If they're deposed, and things arise, the patent holder can, in a pre-litigation context, go back to the patent office. (me: Query how this is viable, since depositions often arise during litigation.  Could make sense for a sequential litigant).

Other big changes: deceptive intent removed throughout the application process; patent owner can seek the patent as the applicant; no more supplemental oaths. 

Post-grant review: patents are now open to more challenges after the patent issues.  It's any issue of patentability that you can raise in court, you can raise in the PTO.  Why is this important?  This lets parties challenge patents the day patents issue, not six years down the road.  Challenging patents in court is expensive.  Post-grant review allows parties to resolve these issues in the matter of months, not years, at a fraction of the cost.

Sees the AIA as increasing transparency, objectivity, predictability, simplification of patent system.  Patent validity is reduced to just four objective legal standard: sufficient differentiation from prior public disclosures and earlier patent filings of others; sufficient disclosure to identify the claimed embodiments and enable them to be put to a specific practical, and substantial use; sufficient definiteness to differentiate subject matter; sufficient concreteness to avoid excessively conceptual or otherwise abstract subject matter.  That's all there is to the patent law.  These are objective standards that don't require you to know anything about what the inventor did, thought, etc. 

The national embarrassment of the first-to-invent system will now end. Example Gore-Tex case of why this was a problem.  Interference count practice was problematic.  It was an embarrassment and it's gone. 

The AIA is an attempt to be a codification of the way Congress wants the law, not a codification of what the law is. 102(b) was a colossal mess because of the attempt to codify existing law.  Under the AIA, there are no new AIA patent law doctrines.  Legislative history says "apply as written."  Example: 102 – only new phrase is "available to public."  Apply as written – this means that prior art is that art which is publicly accessible (comment: this issue is one of the most debated issues in the new AIA).

Who benefits from the AIA?  Those with the least resources, capital available.  It's a patent system optimized for small inventors, universities.  For those engaged in commerce of patents, supplemental examination allows for due diligence to be more effective, since it will allow the curing of inequitable conduct.

6 thoughts on “The America Invents Act: One Year Later (conference)

  1. It will be much more difficuult for large corporations to give small businesses the runaround on invention dates and small inventors are generally faster to file.

  2. I had not realized that the AIA not only eliminated 102(f) that prevented one who is not an inventor from receiving a valid patent, but 102(a)’s exclusion of subject matter that was “known”

    Thus, one can know of another’s invention before one invented and receive a valid patent.

    The double-whammy makes what Congress did very clear.

    Remarkable job there Congress.

    The briefs in the constitutional challenge have been posted by the plaintiff here:

    link to patentlyo.com

  3. Agreed, the architects are all big business, harmonization types who patent and transact business routinely on the world stage. The never let an opportunity go without mentioning the benefits to the startup as if they represented their interests, and without ever acknowledging their strong opposition to the AIA.

    That being said, Armitage took a very strong shot at the prior 102(b) because, he said, it attempted to codify existing law and by doing so, created a mess. What was he talking about? RS 4886 (from 1870) is worded identically. Section 6 of the 1836 Act is worded almost identically:

      “or that it had been patented or described in any printed publication in this or any foreign country, or had been in public use or on sale with the applicant’s consent or allowance prior to the application.

    and, from the defenses in the 1836 Act:

    Section 15

      or that it had been described in 80me public work anterior to the supposed discovery thereof by the patentee, or had been in public use or on saJe with the consent and allowance of thA patentee before his application for a patent

    (The two year grace period was added later.)

    What was he talking about, indeed? The case law he was talking about had to be that regarding public use and on sale, or Pennock v. Dialogue? Is that what he was talking about? If not, what?

    If anything, the supposed error was not made in ’52 by Frederico, nor was it make in 1870. If it was made, it was made in 1836.

    And, HE is intending to fix the error?

    What were you talking about, Mr. Armitage?

  4. It’s obvious and captured in the word you used: “propaganda

    It’s also covered in a quip by one of the regulars on another thread: “The trick is for the declarant/witness to practice the lie often enough so that they actually start to believe that it isn’t a lie.

  5. Yes, it is noteworthy how frequently and with what insistence the propaganda about FTF being good for small entities is drum-beaten by the administration’s supporters. If the AIA was good for small entities, there wouldn’t need to be such proselytism over it; small businesses and independent inventors would simply recognize it. But the reality is quite the opposite: those small entities that are not opposed to this change are either skeptical, uninformed, or resignedly forlorn. Why does this transparent nonsense continue to be offered? What is to be gained by it? The law is passed. Is that not enough? Why are there still those who think it necessary to tell us, “It’s good for you, and you’ll like it, too!”?

  6. For reasons discussed here ad nauseum, many of the statements at the end here are blatantly false. The AIA definitely tilts the playing field AGAINST small inventors. Why the need to misstate the obvious?

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