By Jason Rantanen
Alan J. Kasper, Brad D. Pedersen, Ann M. Mueting, Gregory D. Allen, & Brian R. Stanton, Patents After the AIA: Evolving Law and Practice (Bloomberg BNA 2016).
Last fall, I sat next to Greg Allen at the AIPLA annual conference dinner. After we started talking about the lingering effects of pre-America Invents Act 102(g), he excitedly told me about a treatise he was working on that dealt with that and many other complexities created by the AIA. He enthusiastically described the detail into which the book went, including the dozens of timelines dealing with different chronological issues facing patent prosecutors today and the lengthy chapter on transition issues, a chapter that turned out to be surprisingly complex.
A few weeks ago, I received a copy of the book for reviewing purposes. The short version is that Patents After the AIA is massive and detailed, and aimed largely at those who practice before the Patent Office. The tome, bigger even than Harmon’s Patents and the Federal Circuit, is about three inches thick with over 1,900 tissue-paper thin pages. Packed inside is more detail on the changes and challenges posed by the AIA than anyone might imagine from just reading the (relative short) 58-page AIA itself. The dozens of timelines are there, along with chapters on legislative history, regulations, prior art and grace periods, international issues and harmonization, transition issues and much more. Paired with the discussions of the law are “Practice Tips”: practical advice for prosecuting attorneys. There is a wealth of detail about post-AIA patent practice contained in this book, and it could become the go-to treatise for patent attorneys.
That detail, though, imposes its own limitations. In trying to simultaneously be a treatise on all of patent law and a useful resource for prosecutors, its usability suffers. The substantive portion of the treatise begins with a history of patent law–starting with the Book of Genesis. The first chapter includes an abstract, conceptual overview of “The Innovation Process and Terminology Used in This Treatise,” complete with “instantiations of an invention.” Many topics are covered in multiple chapters, sometimes in a redundant way. Discussions of post-AIA § 102(a), for example, are sprinkled throughout the book, with overlapping discussions in chapters 5 (Prior Art, Grace Periods, and Exceptions After the America Invents Act: Global Considerations), 6 (Prior Art, Grace Periods, and Exceptions After the America Invents Act: Practical Considerations), and 9 (America Invents Act Patentability Standards–Issues and Commentary).
The authors recognize this limitation: before even the table of contents, the reader comes to an eight-page section on “How to Use This Treatise,” begging the reader to “PLEASE…take a few minutes to read and study this introductory section of the treatise.” In chapter 1, after summarizing the AIA, the authors include another orientation section: a description of the treatise’s organization and summaries of the chapters. The authors also attempt to address the complexity of the subject matter by defining terms, with two separate lexicographies (a short one at the front and a long one at the end). In some cases, this helps the reader: for example, differentiating between “Post-AIA” and “Pre-AIA” is critical. But numerous terms that the audience for this book would likely be familiar with, such as “appeal brief,” “evidence,” “malpractice,” and even “human” (“a member of the Homo sapiens species”) are also defined. While definitions can be useful in establishing precision of meaning, they lose their effectiveness with both length of the text and number of defined terms–here, 164 pages of them. The index suffers from the opposite problem: its 37 pages tend to be less detailed in key spots than desirable. For instance, there is just one index column for “Prior art under the AIA” but two columns of index entries for “Prior user rights.” Yet much of the book (and probably the practical concerns of attorneys) relate to the former rather than the latter. Readers will probably find the table of contents to be more useful than the index.
Some of these issues may be due to the multi-author nature of the text, with too many cooks in the kitchen. There’s unquestionably a lot to discuss here, but coupled with the amount of patent law covered there needs to be an emphasis on effectively communicating it. For this treatise to become the go-to volume on patent law, the authors (or maybe just one person) need to focus on taking that next step. Understandably, though, the authors were under significant time pressure in getting this project out the door, and they’re to be commended for what they accomplished.
Ultimately, Patents After the AIA is a useful treatise, with the potential to be more with some judicious editing. Consolidating redundant sections, culling unnecessary text, simplifying (and consolidating!) the definitions, and refining the index would all help improve the accessibility and long-term usefulness of this book. (Although if most readers are going to be using the online version of the text with its search-capability, improvements to the index are of lesser importance). Little errors in execution need to be addressed as well. Fortunately, just like with cooking, that’s an issue that can be remedied in subsequent versions. Given the rapidity with which patent law continues to develop, and the certainty that there will be judicial interpretations of the open questions the authors identify, those versions are likely to be needed in the near future.
- The treatise defines “instantiation” as “[a] codification, manifestation, or representation of abstract subject matter or information as an actual, concrete, or real-world instance of that subject matter or information.”
- As is “and/or,” a term that should be excised from all writing, defined or not.
Disclosure: As I mentioned above, I received a (gratis) copy of this text so that I could write this review. I also was a speaker at the AIPLA annual conference this past fall.
Edit: Based on a reader’s comment, here’s a direct link to the Bloomberg/BNA page for the book: http://www.bna.com/patents-aia-evolving-p57982059262/