The America Invents Act: Traps for the Unwary
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course Posted: September 6, 2013 @ 3:18 pm
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EDITOR’S NOTE: This year I will be speaking at the AIPLA meeting on The AIA: Traps for the Unwary. I will publish my paper here on IPWatchdog.com in segments over the next week. We also have on tap a wide ranging discussion with AIPLA Executive Director Todd Dickinson, and a few other AIPLA-centric pieces are in progress. Ultimately our AIPLA coverage will culminate, as usual, with full coverage of the AIPLA annual meeting, which takes place at the Marriott Wardman Park Hotel from October 24-26, 2013. CLICK HERE to register for the AIPLA annual meeting.
The America Invents Act (AIA),  signed by President Barack Obama on September 16, 2011,  ushered in many significant changes to U.S. patent law. The USPTO summarizes the changes that went into effect on March 16, 2013 as follows:
(1) Convert the U.S. patent system from a ‘‘first to invent’’ system to a ‘‘first inventor to file’’ system; (2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3) eliminate the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and (4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103. These changes in section 3 of the AIA are effective on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013. 
Honestly, it is impossible to in any single article or series of articles describe the magnitude of the changes ushered in by first to file. This is because Congress has fundamentally altered the definition of what is considered prior art. An applicant is still entitled to a patent unless there is prior art that renders the claimed invention unpatentable because it is not new or because it is obvious. But what references and information can be considered prior art? That is where things have fundamentally changed.
Consider the following:
- On Friday, March 15, 2013, a secret sale of a device more than 12 months before U.S. filing would have precluded a patent from being obtained. Effective Saturday, March 16, 2013, a secret sale of a device is never going to be prior art no matter how long ago it happened. 
- On Friday, March 15, 2013, you could not file a patent application on something that you had long kept as a trade secret process. Effective Saturday, March 16, 2013, long held trade secrets could be patented. 
- On Friday, March 15, 2013, a foreign patent or foreign patent application would not be considered prior art as of the foreign filing date. Effective Saturday, March 16, 2013, a foreign filing date can be a prior art event. 
- On Friday, March 15, 2013, an applicant could file a U.S. patent application covering an invention that was the subject of a publication provided the publication was dated less than 1 year earlier. This was true even if the publication was by another individual or entity that independently arrived at the invention on his or her own. Effective Saturday, March 16, 2013, if another individual or entity independently arrived at the invention and published an article before the first inventor filed the first inventor who filed will be unable to obtain a patent unless the subsequent disclosure was nearly identical to the first disclosure. 
- On Friday, March 15, 2013, an applicant could effectively be forgiven for public use activity if that activity were deemed experimental in nature such as to invoke the public use exception to pre AIA 35 U.S.C. 102(b). Effective Saturday, March 16, 2013, we are left with no official interpretation relating to the persistence of a public use exception under the AIA. The USPTO pointed out that nothing in the legislative history expressly addressed whether the experimental use exception to public use persists under AIA 35 U.S.C. 102(a)(1). Furthermore, the USPTO chose not to take a position on public use saying: “Because this doctrine arises infrequently before the Office and is case-specific when it does arise, the Office will approach this issue when it arises on the facts presented.” 
- If an application contains at least one claim having an effective filing date before March 16, 2013, and at least one claim having an effective filing date on or after March 16, 2013, the entire application will be examined under AIA even if the latter claims are cancelled. 
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These are but a few of the changes and nuances contained within the AIA and implementing rules. While many believe that some USPTO interpretations will ultimately be overturned by Courts, it would be most prudent to advise clients conservatively. For example, if someone presents with a secret, black-box innovation that has been used for more than 12 months it would be wise to advise the client that under the AIA it may be possible to obtain a patent when under pre-AIA no patent could be obtained. Ultimately, the Federal Circuit may not agree with the USPTO, but if courts do ultimately agree with the USPTO interpretation it would be difficult if not impossible to explain away advising a client that there was no possibility of obtaining a patent.
A Simple Guide to the AIA Oddities
The AIA is a complex bill that includes the most significant changes to U.S. patent law since at least the 1952 Patent Act, perhaps since the inception of patent laws in the United States in 1790. What makes these changes so significant is the fact that they are widespread and relate fundamentally to what is considered prior art, which at its base makes up the fabric of patent examination and review of issued patents for validity purposes. Add to it the procedural changes and the AIA easily is one of the most momentous, if not the most momentous, changes to patent law and patent practice ever. Thus, summarizing the AIA in a few pages while providing any semblance of exhaustive treatment is simply not possible. Notwithstanding, I endeavor to provide a high level overview of some of the provisions of the AIA that contain issues that could be characterized as traps for the unwary.
First, it is worth noting that the most significant changes did not go into effect right away. Rather, there were waves or phases of implementation. The first phase of implementation was relatively minor and occurred within the first 60 days. The second phase of AIA implementation became effective on September 16, 2012, and brought with it a host of new post-grant procedures, supplemental examination, changes to the oath or declaration requirement, and other various items. By any objective measure phase two ushered in massive changes to patent law and procedure.
By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States became a first to file country (more or less), abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a true first to file system that resembles what first to file means to the international community. Thus, the United States remains an island on to itself with respect to whether a claimed invention is novel.
Under the U.S. version of first to file there are still some exceptions whereby a person who files a patent application second can still prevail over a prior filing party, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the United States Patent and Trademark Office (USPTO) at this point.
It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, long held and previously unpatentable trade secrets can now be patented.
CLICK TO CONTINUE READING… next up is a discussion of “first-inventor-to-file” provisions, with specific emphasis on the peculiarities of the grace-period.
 Public L. No. 112-29 (112th Congress).
 The Bill is Signed: President Obama Signs America Invents Act (last visited August 29, 2013).
 Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 FR 11024 at 11024 (col. 2) (February 14, 2013).
 Examination Guidelines for Implementing First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 FR 11059 at 11060 (col. 3) and at 11062(February 14, 2013)(“secret sale or use activity does not qualify as prior art.”).
 Id. See also infra Section II(D).
 AIA 35 U.S.C. 102(d) eliminates the Hilmer doctrine. Under the Hilmer doctrine, the foreign priority date of a U.S. patent (or U.S. patent application publication) may not be relied upon in determining the date that the U.S. patent (or U.S. patent application publication) is effective as prior art under pre-AIA 35 U.S.C. 102(e). AIA 35 U.S.C. 102(d) provides that if the U.S. patent, U.S. patent application publication, or WIPO published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.
 See infra Section II(A) for more discussion.
 Examination Guidelines for Implementing First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 FR 11059 at 11063 (col. 2)(February 14, 2013).
 Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 FR 11024 at 11043 (col. 2) (February 14, 2013).
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Posted in: AIPLA, America Invents Act, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents
About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.