Implementing the AIA: First to File Patents

By Dennis Crouch

It is hard for me to believe that the America Invents Act of 2011 is now four-years old.  Some changes (Joinder, Fees, e.g.) had fairly immediate impact.  Although somewhat slower coming on-line, the new Inter Partes Review and Covered-Business-Method Review systems are now major fixtures in patent enforcement-defense strategies.

The final major element of the AIA is actual implementation of transformation of the prior art rules in 35 U.S.C. 102.  The new first-to-file law applies to patent applications having at least one claim whose earliest effective priority filing date is on or after March 16, 2013.  In the past 30 months since then, hundreds of thousands of AIA patent applications have been filed – and those are beginning to trickle out as issued patents.  I pulled-up the PAIR files for 800+ recently issued patents (from the first two weeks of Sept 2015) and looked at the reported AIA-Status of those patents. (Table 1 below)

 Table 1: All Patents Only Patents Filed Post-AIA
AIA Patents

147

147

Non-AIA Patents

721

262

Total

868

409

Percent AIA

17%

36%

95% CI (+/-)

3%

5%

Of the 868 patents, 147 are “AIA” patents – meaning that none of the claims of the patent (or application) could have effectively an effective filing date before March 16, 2013 (the “AIA-date”). This represents 17% of the total number of patents in my sample and 36% of the number of patents in my sample that were filed after the AIA-date. I also report the 95% confidence interval that is based upon the simple binomial calculation (p(1-p)/n). The chart below considers the same type of data, but uses a time-series stretching back to the beginning of 2015 showing a linear fit to the data.


Where the AIA Status is Defined: My understanding is that the AIA data field in PAIR has been populated as “no” for any application filed prior to the AIA date; populated as “yes” for any application filed after the AIA-date that has no pre-AIA claims for priority or benefit; and finally, for transitional applications filed post-AIA but with a pre-AIA priority claim, populated according to the AIA-question in the Application Data Sheet. [The AIA-status of an application is obviously information material to patentability and so we will likely see some inequitable conduct allegations down the line.]

Not Yet Litigated: Although there are now several thousand AIA patents issued, there have been no court cases yet involving an AIA patent or patent application.  Likewise, we have no Post Grant Review (PGR) final decisions and we have no PTAB decisions from ex parte cases involving AIA applications. Those will come, but meanwhile many patent attorneys will continue to operate with some ambiguity regarding how Section 102 will be interpreted going forward. Important big questions: Do non-enabling commercial uses; confidential sales; and confidential offers-to-sell still qualify as invalidating prior art? What activities will count as “otherwise available to the public?” How narrowly will the narrowed grace period of 102(b)(1) be interpreted? (e.g., does the grace period only apply to pre-filing disclosures of the claimed invention itself as suggested by the text or instead can any pre-filing disclosure by or from the inventor qualify?) What is the impact of elimination of Section 102(f)?

13 thoughts on “Implementing the AIA: First to File Patents

  1. Even with several thousand AIA patents issued there have been less than a dozen Post Grant Review (PGR) petitions applicable even attempted, vastly less than the PTO had originally predicted. Confirming what I predicted years ago, that almost nobody runs around starting expensive litigation with broad estoppels against patents they have not been sued in only their first 9 months of life, even though the ground for invalidation are far broader than in an IPR.

    1. Explaining to the PTO why a given patent is junk with PGR requires substantial time and money.

      People need to be incentivized in some manner (i.e., rewarded for their work, particularly if successful) or the process needs to made far easier or both.

      1. That’s the point – the only normal incentive to filing any post grant proceeding is being thrown into expensive patent litigation, and that rarely happens for the brand new [less than 9 month old] patents that PGR only applies to.

        [Nor would it make economic sense to encourage attacks on the vast majority of patent claims that no business or new venture is threatened by.]
        [Furthermore, most businesses are not even aware of arguably infringed claims until they are sued or at least offered for licensing by the patent owner.]
        Note the very infrequent use of the new AIA system for citing prior art against pending applications [after they are published and before they are allowed] even though that can be done at NO significant cost.

        1. I suspect that the PGR proceedings will primarily be used against follow-on continuation patents where the parents are already being fought-over in Court. However, that situation is not likely to arise for several more years.

          1. No doubt you are right, Dennis, that PGRs will always be used as a form of collateral attack — two bites at the same apple, with one having claim construction and burden of proof favoring the infringer, the other, favoring the patent owner.

            The whole system is beginning to stink like the fetid sewer it is. Congress was sold a bill of goods by smart lawyers from big companies that wanted to get patent validity litigation out of the courts into a political institution controlled by the White House where money talks loudly, and with anti-patent procedures and proof burdens.

            But you say, these PTAB judges are immune from political influence? I don’t believe that for a second, Dennis. Not for a second. They respond to their bosses, and their bosses respond to money.

            Congress was corrupted by big money to do this. The White House went along, perhaps for the same reason. Congress is not going to get rid of PGRs any time soon because of big money. The only hope for the patent system is for the courts to hold all of this unconstitutional.

        2. Note the very infrequent use of the new AIA system for citing prior art against pending applications [after they are published and before they are allowed] even though that can be done at NO significant cost.

          I’m shocked — shocked! — that Kyle Bass isn’t providing better art to the PTO at this early, inexpensive stage.

          1. That’s a good inside joke. However, I think the “incentive” for the rare incidence of “Bass fishing” has been greatly reduced by their 3 for 3 IPR petition strikeout record. By now any savvy stock market investors should be far less likely to panic and sell upon hearing that an IPR petition or other PTO action has been attempted by short seller, hence the likelihood of buying the stock a lot cheaper after the announcement of the IPR petition should now be significantly reduced. [Nor do I think that will necessarily be the only consequence.]

    2. Paul, accurate prediction, that.

      Back when Armitage first formed the Opposition Committee lead by Hal Wegner, I was concerned that the new opposition not replace reexaminations as most companies would not engage in them as a matter of course unless accused of infringement in connection with a related application. Only when a controversy got hot would they even consider filing a reexamination request — now preferably an IPR.

      But that was then, and this is now. The way things have developed over time, with a lower standard of proof, BRI, multiple serial reexaminations, the IPRs being conducted in a hostile forum as a form of collateral attack, institution decisions being reviewed my the same judge or judges, I have come to strongly oppose the whole system. It is unfair, expensive and it will kill the patent system for startups and universities who need it the most.

        1. Thanks anon. Big Pharma needs patents and does not see the PTO as a proper forum to litigate validity.

          Congress is never going to carve out Big Pharma, nor demand that the PTO insulated itself from political control and adopt fair procedures. The opposition to any such reform or carve our by big money is intense.

          The only hope is singular, and we both know what that is.

  2. As to:

    The AIA-status of an application is obviously information material to patentability and so we will likely see some inequitable conduct allegations down the line.]

    I do have to wonder if such will (or how often or infrequently) rise to the level of “but for” that would be needed to sustain any IC charge in court actions.

    Combined with “intent,” and the double whammy of the “confusing” aspect of the change and the wide scale removal of the phrase “with deceptive intent” that also accompanies the changes of the AIA, and I don’t think we will see a new “plague” of IC charges.

    1. I believe what is meant is that some asserted AIA patent claims may run into invalidity or worse issues from: (1) the applicant’s miss-characterizing of patents as AIA or NOT AIA subject, or (2) material mistakes of patent agents and attorneys who have not correctly learned all the differences in what is prior art for AIA patents vs non-AIA patents. That could lead to some increased IC defenses, because ignorance of the law is not a very effective defense. Nor is the examiner also not knowing the legal differences likely to be a good defense to an affirmative attorney assertion in ex parte prosecution of an erroneous and material legal position to “remove” cited art as prior art.

      1. I am sure that some of anything will meet anything.

        Do you think that will be more or less than 2% (of the already 2%)?

        Shall we get in a tizzy over that?

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