Considered by many as the most comprehensive revision to the United States patent system in over 50 years, the America Invents Act (“AIA”) represents progressive legislative reform intended to align U.S. patent policy with global precepts, i.e., systems which reward the “first-to-file” a patent application. Many AIA provisions modify or completely change the former first-to-invent (“pre-AIA”) U.S. patent system, with the most immediate and conspicuous AIA component — the establishment of a filing-based regime as of March 16, 2013 — serving as the hallmark and mark of U.S. patent reform.
Nonetheless, having only enjoyed 3-months of the AIA in its entirety, it is still too early to appreciate the de facto impact of this nascent legislation. The AIA has nevertheless ushered in transitional strictures that have uniquely placed research institutions in an ostensible patent-policy “reformation” with respect to technology evaluation and knowledge translation. While the pervasive nature of this new patent regime imparts an array of university-based concerns, the following Top 5 considerations are intended to reengage university professionals and employees with patent reform concepts and concerns during the initial “aftermath” of the AIA. For a quick reference guide please see America Invents Act (AIA) Chart for University Personnel.
(5) It’s the AIA niceties that are important, but it’s more than the import that make the AIA nice
Disambiguation notwithstanding, the AIA is exacting in its requirements and compliance is critical. Compliance, however, requires comprehension in concert with strategic consideration. To this end, most if not all university personnel involved in technology commercialization are, at a minimum, acquainted with the generalities of the AIA, while many higher level officers possess a comprehensive understanding and appreciation of the AIA. The few who may not include themselves in such a group, however, should not panic. Acquainting yourself with the AIA and achieving a working knowledge base does not require a sabbatical. Within the AIA-university purview, practical guidance and recommendations are ubiquitous and can be found with little effort.
As with any new legislation, moreover, unlitigated terms and provisions may render definitive solutions or answers impossible in some instances. Consequently, withstanding the practical impact of the AIA may require multiple strategies designed to provide fail-safe redundancy should an unanticipated result arise. Such AIA strategies should at least consider the following P.A.T.E.N.T. factors:
(4) Disregard the “old” rules at your peril
For approximately the next 20 years, the “old” pre-AIA rules remain applicable because, inter alia, the AIA first-to-file provisions have no retroactive effect, obligatory exceptions to the rule notwithstanding. In general, U.S. patent applications filed before March 16, 2013 (the “transition date”) are examined under the pre-AIA rules, while later filed applications will be governed by the AIA. As such, in accord with pre-AIA rule retention for many recently filed applications, due diligence going forward will likewise invoke the “old” rules for years to come.
(3) Convert transitional applications with care
The importance of administrative monitoring, i.e., docket management, cannot be understated for applications “straddling” the transition date, e.g., provisional applications filed before the transition date that are converted to non-provisional applications subsequent to March 16, 2013. Under these circumstances, adding new matter has the potential to render obvious (or anticipate) an otherwise patentable invention by irreversibly invoking the AIA, albeit only if the added matter is claimed. A more detailed explanation to this end can be found in the AIA Chart. Nevertheless, such additionally claimed matter at least presents?unnecessarily?the possibility of subjecting an application to undesirable AIA provisions, e.g., post-grant review. For reasons that are apparent, a former colleague of mine, Courtenay Brinckerhoff of Foley and Lardner, has termed the unwelcome or unintended invocation of the AIA “patent poisoning.” While the AIA rules relating to transitional practice are nuanced in many respects, they are nonetheless part and parcel to an evolving U.S. patent regime.
(2) File chains of continually developing provisional applications
In the university context, the status quo of provisional application practice typically involves adding new matter (improved or additional invention embodiments) to an application immediately prior to its non-provisional conversion. This practice, however, leaves unprotected (until converted) new concepts that may be more focused and commercially valuable. By filing a chain of continually improving provisionals, the most nascent/generic embodiments can be protected as early as possible, which therefore decreases the vulnerable time period from conception to filing. Likewise, the specific?industry tailored?developments are protected as they materialize which consequently eliminates or dramatically decreases the likelihood of facing intervening prior art borne out of the status quo.
(1) It’s not all bad
Although there is a general consensus within the patent community that the AIA is predominantly deleterious to the patentee, there is an upside. Indeed, certain AIA provisions are in fact more favorable for universities, e.g., qualifying status as micro-entities, joint research agreement provisions, and the university exception to the prior commercial use defense, compared to pre-AIA rules as further outlined here. Understanding and exploiting these AIA provisions are essential for any university office of technology transfer.