AIA Patents: 20% of Newly Issued Patents

By Dennis Crouch

The percentage of AIA-patents continues to rise. The chart below shows the percentage of newly issued patents that are AIA utility patents – with about 36,000 AIA utility patents issued so far. I expect that by August 2016, the bulk of newly issued patents will be AIA patents. Under the statute, AIA patents include those patents whose applications ever included a claim with an effective filing date on or after March 16, 2013. [updated to correct an error in dates].  This dividing line is easy for applications filed before that date (not AIA patents) and for applications filed after that date without any priority claims (AIA patents). The only complicated set are those applications filed post-AIA but that claim priority to a pre-AIA application. For those transition cases, applicants are asked to indicate which category is proper.

I will note that none of the provisions of the totally revised Section 102 have seen any court or PTAB decisions – those are likely still at least one year away – especially since the PTO is favoring applicants in regard to secret sales, offers for sale, and commercial uses (thus, those issues won’t be challenged until enforcement-time). Up-to-now, the USPTO has not altered its patent document to include any indication of which law was applied during prosecution.

Note: The statute reads as follows:  (1) IN GENERAL.—Except as otherwise provided in this section, the amendments made by this section shall take effect
upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

34 thoughts on “AIA Patents: 20% of Newly Issued Patents

  1. 4

    Perhaps merely a nit, but I do not think the statement of “Under the statute, AIA patents include those patents whose applications never included a claim with an effective filing date before March 16, 2013.” is quite correct.

    In those cases of mixed “vintage,” ANY claim which implicates the AIA places the entire application into the AIA zone – even if such offending claim is actually dropped later, and the only remaining claims are those claims which would have the entire applications “safely” in the pre-AIA realm.

    A side point here may be worth noting: for all of the “desired good” that the new system was “sold” with, why is that every indicator available paints the picture of avoiding falling into the AIA zone, and not a single indicator points to anyone wanting to move from a pre-AIA zone into the AIA zone…

    1. 4.1

      for all of the “desired good” that the new system was “sold” with, why is that every indicator available paints the picture of avoiding falling into the AIA zone, and not a single indicator points to anyone wanting to move from a pre-AIA zone into the AIA zone…

      “If the upcoming ban on [whatever] is a good thing, why are people rushing to buy them?”

      Pretty sure you can figure out the answer to these questions. The patent system isn’t all about dreams and fantasies of the tiny tiny fraction of people who intend to own patents. People who managed convinced themselves otherewise during the worst years of The Great Patent Bubble should get with the program or they are going to be disappointed for many, many years to come.

      1. 4.1.1

        ban…?

        My, how your petty world view is colored by your short script “anyone who wants a patent must be a G-g-g-grifter” bias.

        You really do miss the point that the AIA was sold as a benefit to those selfsame “G-g-g-grifters,” don’t you?

        And once again, you mindlessly dip into the “tiny fraction” fallacy – while at the same time, no doubt, still continuing to seek to deny protection to innovation in the form that is most accessible to the opposite of that “tiny fraction.”

        On top of that, it is noted that you really haven’t answered any questions yourself at all. All you have done is v0m1t the same C R P and projections that you always do – the same purportedly self-l0ath1ng (since you claim to work in this field) on those who would want to have patents.

        You really need to get into a field in which you can believe in the work product produced.

    2. 4.2

      Anon,

      I think the reason is that the ticket to the AIA zone is not very expensive but, as you noted, there are no round trip tickets available.

      1. 4.2.1

        Round trip or one way – the traffic flow shows but a single pattern…

        What happened to the “benefits” of the destination that no one is choosing to go to?

        Would not there at least be some small amount of people purposefully making amendments to pre-AIA applications in order to achieve the “benefits” of AIA law….?

        Why is it that we have heard absolute zero of this?

        Absolute? (which to say, the “G-g-grifters” excuse simply does not apply, as that would mean that 100% of patent applicants fall to those “scurrilous” label)

        1. 4.2.1.1

          …to play against your own “one way ticket” analogy:

          No one is even buying one way tickets. To be such a ticker would be evidenced by those in the pre-AIA era purposefully trying to get into the AIA zone of law.

          There are zero stories of this happening.

          Zero.

          If the AIA was “such a good thing” (and yes, Malcolm, a “good thing” for ANY and all players), why then is it that we see absolute no stories of applicants choosing to convert pre-AIA applications into AIA applications.

          As I mentioned, an easy path is to make an amendment, and then simply cancel that amendment.

          Instead of a mindless response of bile from those who are clearly anti-patent, perhaps we can see a thoughtful response as to why applicants (ALL applicants, and not just any supposed “G-g-g-grifter types) just are not choosing that option.

          1. 4.2.1.1.1

            Anon,

            Some quick thoughts: Saying there is Zero Evidence reminds me of an inventor who says “I’ve never seen anything like it.” How would one know about conversions to post-AIA? (I, as an amateur, can’t find any info.)

            The PTO Dashboard shows a spike in applications in March 2013 from 30k to 60K, but the drop next month is only to 25k and then it goes back to 30k per month. If post-AIA was thought to be so bad, I would have thought a far larger number of post-AIA applications would have been brought forward. I think the reason for the spike was based on the devil you know since one can always convert later.

            The advantage of pre-AIA is that one can swear behind a reference in the previous year by proving a prior date of invention. Until a Notice of Allowability, it is risky to convert.

            The advantage of post-AIA is that it seems secret prior art is excluded. Being secret means the examiner won’t cite it, so there is not much of an advantage during normal prosecution.

            With FTF, proving daily diligence with bound, signed and witnessed notebooks does one no good. But even under the old regime, in the rare occasions of an interference, the first to file usually won. For SMEs, the proceeding was too expensive anyway. So now, one can forget about that (still keeping lab notebooks for scientific purposes and taking a week off to recharge) and spend the effort on more inventions and filing provisionals.

            Another big advantage is that if the invention is successful and involved in litigation, the chances of someone coming out of the woodwork claiming they were the first to invent is much diminished.

    3. 4.3

      EFFECTIVE DATE.—
      (1) IN GENERAL.—Except as otherwise provided in this section,
      the amendments made by this section shall take effect
      upon the expiration of the 18-month period beginning on the
      date of the enactment of this Act, and shall apply to any
      application for patent, and to any patent issuing thereon, that
      contains or contained at any time—
      (A) a claim to a claimed invention that has an effective
      filing date as defined in section 100(i) of title 35, United
      States Code, that is on or after the effective date described
      in this paragraph; or
      (B) a specific reference under section 120, 121, or 365(c)
      of title 35, United States Code, to any patent or application
      that contains or contained at any time such a claim.

  2. 3

    The “about 36,000 AIA utility patents issued so far” has to be on top of vastly more already published AIA applications. Both are useful numbers. For example, if AIA Derivation Proceedings for allegedly stolen inventions were going to be used much [versus (far more likely) being “scarcer than hens teeth”] more than one should already have been requested by now?

    As you say Dennis, it is too early to see AIA statutory interpretation litigation decisions, but I wonder if there are PTO petitions pending or decided on some such issues?

    1. 3.1

      Derivation proceedings – much like their “sister” interference proceedings – have always been (while real for those involved) more of a “boogeyman” than anything else.

      To let such guide the policy of the larger whole is to let nothing but an even weaker version (of the flea on the tail of the dog, wagging the dog, that actual court enforcement is to granted patents) control.

      It’s even a bit like letting the exceptions swallow the rules (gee, where have I seen that before…?)

  3. 2

    “Up-to-now, the USPTO has not altered its patent document to include any indication of which law was applied during prosecution. ”

    I wouldn’t hold my breath on that either. Up to now, the USPTO doesn’t even indicate which law is applied in the Office Action. Claims are rejected under which ever law is applicable e.g.: “Claim 1 is rejected under 35 USC 112(b) or 35 USC 112 (pre-AIA), second paragraph, as being indefinate…”

    1. 2.1

      Les,

      Those paragraphs read:

      35 U.S.C. 112 Specification.
      (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention

      The AIA only added “(b) CONCLUSION,” but the law did not change, so this is not the best example. I think Dennis was referring to 102 which did change quite a bit.

        1. 2.1.1.1

          Les,

          I don’t think it is universally true, but I can understand examiners taking an “as the case may be” approach because most rejections are based on patents or publications more than a year before the filing date. And, in other situations, leaving it up to the applicant to disqualify the prior art if they can. Make sense?

          The uncertainty is for applications filed on or after March 16, 2013 (normally post-AIA), but all the claims from the beginning are supported by a priority application filed before then. In that case, don’t check the box (an odd way of doing it) on the Application Data Sheet and it will be pre-AIA. So the PTO has the data going in (stored somewhere), but a claim amendment could change to post-AIA. Somebody in the PTO would have to do some bookkeeping to get what Dennis is after.

    2. 2.2

      At first I misread your statement.

      The PTO has changed paragraphs in the Office Actions to indicate which law is being used. Whether all examiners are using them properly is another issue.

      However, I have not seen, as you not, any indication on the issued patent whether AIA or pre-AIA law was used for examination.

      1. 2.2.1

        Literally every office action inserts at the top “This app. is being examined under AIA/pre-AIA FITF/FTI” by default.

    3. 2.3

      Literally every office action inserts at the top “This app is being examined under AIA FITF/Pre-AIA FTI provisions” or something to that effect.

      By default. The only reason it wouldn’t be there is if somebody deleted it. Have you seriously never seen this in the OA?

      Also, every OA should have the “In the event the AIA/pre-AIA status is correct, the claims are rejected by the corresponding statute”. Most of the 102/103 rejections would hold; in the case they would not hold, it is examiner error.

      Of course, the tricky cases involve priority in pre-AIA land and post-AIA claims, because examiners should be checking whether or not the claims are supported by the pre-AIA disclosure, otherwise they would be rejected under AIA. But that’s another story.

  4. 1

    Hey Ned, I read the sequence from Murray’s Lease to Stern. I have a couple questions:

    (1) Do you think Scalia’s 30-year mantra about the public rights doctrine is only to matters between the government v. individual OR historical government affairs (taxes, political branches operations etc) OR, as he admitted in his Stern concurrence, certain agency frameworks [citing Crowell v. Benson, 285 U.S. 22 (1932)] will garner steam?

    I doubt it. Stern was decided 5-4. And, John Roberts + Thomas + Alito + Kennedy (+ reluctant Scalia) left the plethora of public rights exceptions all up in the air. Or, in alternative, was John Roberts was being a smart conservative Chief Justice and moving the doctrine slowly toward Scalia’s formulation?

    (2) Please forgive if you have, but I haven’t seen you address: Commodity Futures Trading Commission v. Schor, 478 U.S. 833 (1986) nor Crowell. There is some dangerous language laying about in Stern: e.g,. “This is not a situation in which Congress devised an ‘expert and inexpensive method for dealing with a class of questions of fact which are particularly suited to examination and determination by an administrative agency specially assigned to that task.’ Crowell, 285 U.S., at 46, 52 S.Ct. 285.”

    However, are you relying on:
    This Court disagreed, but only after observing that (1) the claim and the counterclaim concerned a “single dispute”—the same account balance; (2) the CFTC’s assertion of authority involved only “a narrow class of common law claims” in a “`particularized area of law'”; (3) the area of law in question was governed by “a specific and limited federal regulatory scheme” as to which the agency had “obvious expertise”; (4) the parties had freely elected to resolve their differences before the CFTC; and (5) CFTC orders were “enforceable only by order of the district court.”

    That IPR and reexams clearly lack several of these aspects, while satisfying several.

    1. 1.1

      was John Roberts being a smart conservative Chief Justice

      John Roberts is back to being “conservative” again? Last time I checked he was a “liberal hero”.

      Maybe you should define the term “smart conservative” so your awesome insights are clear to everyone.

      1. 1.1.2

        As compared with your awesome insights? I note that your response is simply two complaints, with no substantive points. This is what is called “attacking the messenger”. Fun to play, but it doesn’t advance the conversation.

        1. 1.1.2.1

          The “c” or the “l” words and Malcolm starts drooling like Pavlov’s dog.

          The difference is that the canine saliva has more substantive merit.

    2. 1.2

      drop by: There is some dangerous language laying about in Stern: e.g,. “This is not a situation in which Congress devised an ‘expert and inexpensive method for dealing with a class of questions of fact which are particularly suited to examination and determination by an administrative agency specially assigned to that task.’ Crowell, 285 U.S., at 46, 52 S.Ct. 285.”

      What’s “dangerous” about that language?

      1. 1.2.1

        As Ned pointed out above at 1.1.1 – Kennedy is the one that usually switches the side of the aisle he votes with.* John Roberts is a smart conservative chief justice because he is focused on: (1) protecting the court** and (2) slowly moving doctrine conservative instead of lurching that way.***

        * Roberts got yelled at by conservatives for the ACA cases as being liberal, but see below.

        ** Roberts tries to shepherd the court, much like Taft and Warran. They both understood the political nature of the court and how to avoid it or embrace it.

        *** Roberts has steadily moved the court to right in small steps. See National Federation of Independent Business v. Sebelius (US 2011), where he pulls a reverse John Marshall in Marbury v. Madison: this would be unconstitutional under commerce clause (limiting liberal agenda by dicta), but it’s okay under taxing power (not a very useful power vis a vis the commerce power).

        As for the dangerous language: lawyers get paid to take small statements in court opinions and amplify them to argue their point. So, that the dangerousness of that statement is that it has omitted all of the qualifiers that the opinion put on that line of cases.

        1. 1.2.1.2

          the dangerousness of that statement is that it has omitted all of the qualifiers that the opinion put on that line of cases.

          Why is that “dangerous”?

        2. 1.2.1.3

          lawyers get paid to take small statements in court opinions and amplify them to argue their point

          If that’s all your lawyer is doing, you probably aren’t winning many cases. Anybody can take a quote of context and “amplify it”. But if that amplification boils down to an empty suit crying “dangerous” or “liberal agenda!” or “1622 courts of chancery!” you’re likely to end up holding the bag.

          1. 1.2.1.3.1

            Yes, crying “dangerous” or “liberal agenda!” or “1622 courts of chancery!” is a poor way of arguing any case. That was not my point.

            I am done interacting with you – I already knew this would come – it’s like you purposefully don’t want to engage.

            But, I will respond since I already started typing:

            “limiting liberal agenda by dicta

            ROTFLMAO”
            – in general, yes, liberals tend to use commerce clause to do a lot; conservatives have thought that improper.

            “the dangerousness of that statement is that it has omitted all of the qualifiers that the opinion put on that line of cases.

            Why is that “dangerous”?”
            – it is dangerous in the same way as Korematsu v. united states, 323 U.S. 214 (1944) is still “good” law for equal protection analysis – you leave a loaded gun for future litigation.

            Which ties into the lawyer argument piece: if my litigation position is new, I want my lawyer to read every sentence that could possibly indicate what the court would do or at least persuade them that precedent has an opinion on this matter; why is that wrong? I don’t think it is.

            1. 1.2.1.3.1.1

              ^^^ “I am done interacting with you – I already knew this would come – it’s like you purposefully don’t want to engage.

              come “folks” is anyone really surprised by this observation?

              Nine years and running of short scripted drive-by monologuing and a lack of meaningful engagement…

    3. 1.3

      drop by,

      Regarding Schor, Wellness v. Sharif they came out in June:

      On the constitutional question (the one relevant here) the Court began by holding that Schor had “waived any right he may have possessed to the full trial of [the broker’s] counterclaim before an Article III court.” Id., at 849, 106 S.Ct. 3245.
      1943
      *1943 The Court then explained why this waiver legitimated the CFTC’s exercise of authority: “[A]s a personal right, Article III’s guarantee of an impartial and independent federal adjudication is subject to waiver, just as are other personal constitutional rights”—such as the right to a jury—”that dictate the procedures by which civil and criminal matters must be tried.” Id., at 848-849, 106 S.Ct. 3245.

      The Court went on to state that a litigant’s waiver of his “personal right” to an Article III court is not always dispositive because Article III “not only preserves to litigants their interest in an impartial and independent federal adjudication of claims. . ., but also serves as `an inseparable element of the constitutional system of checks and balances.’ . . . To the extent that this structural principle is implicated in a given case”—but only to that extent— “the parties cannot by consent cure the constitutional difficulty. . . .” Id., at 850-851, 106 S.Ct. 3245.

      Leaning heavily on the importance of Schor’s consent, the Court found no structural concern implicated by the CFTC’s adjudication of the counterclaims against him. While “Congress gave the CFTC the authority to adjudicate such matters,” the Court wrote,

      “the decision to invoke this forum is left entirely to the parties and the power of the federal judiciary to take jurisdiction of these matters is unaffected. In such circumstances, separation of powers concerns are diminished, for it seems self-evident that just as Congress may encourage parties to settle a dispute out of court or resort to arbitration without impermissible incursions on the separation of powers, Congress may make available a quasi-judicial mechanism through which willing parties may, at their option, elect to resolve their differences.” Id., at 855, 106 S.Ct. 3245.

      The option for parties to submit their disputes to a non-Article III adjudicator was at most a “de minimis” infringement on the prerogative of the federal courts. Id., at 856, 106 S.Ct. 3245.

    4. 1.4

      drop by,

      I think congress can, under the commerce clause and similar clauses that provide for regulation of something, create new rights or regulations and puts their determination entirely within the competence of regulatory agencies with the examiner’s.

      For example, the ITC regulates unfair acts involving interstate commerce. Congress did not have to put any of this in the court system and it did not.

      Similarly, Congress created new kind of hybrid cause of action known as the Hatch Waxman type of infringement which is largely hypothetical. While put this in the courts it could have easily put the whole of it into regulatory agencies.

      You will note that ITC actions and Hatch Waxman actions both involve litigation of validity and infringement. With respect to the ITC, Congress has specifically provided that there will be no collateral estoppel effect. I think the same would be provided if Hatch Waxman were placed into regulatory agencies.

      Certainly Congress has the power to provide that the USPTO examine patents before they are issued. This certainly is what these public rights cases had a mind – an expert agency that reviews a request to have a patent for compliance with all sorts of regulations.

      But one is thing is central to all these cases this: if an action was litigated at common law in the courts of England, such an action cannot be removed from the courts and placed into a legislative tribunal. It is sufficient to know that actions to cancel or revoke patents for invalidity were actually litigated in the courts of England at common law. Moreover such actions had a right to a trial by jury. Thus actions like these revocation actions cannot be removed from the court systems and placed into an agency like the USPTO.

      1. 1.4.1

        Thanks for the response Ned. Violation of Article III if no consent. Violation of Article III if consent + structural concerns of encroachment. No violation of Article III if consent + no structural concerns of encroachment.

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