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The America Invents Act: Traps for the Unwary


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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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.

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The America Invents Act (AIA), [2] signed by President Barack Obama on September 16, 2011, [3] 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. [4]

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. [5]
  • 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. [6]
  • 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. [7]
  • 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. [8]
  • 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.” [9]
  • 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. [10]

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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.

 


[2] Public L. No. 112-29 (112th Congress).

[4] 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).

[5] 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.”).

[6] Id. See also infra Section II(D).

[7] 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.

[8] See infra Section II(A) for more discussion.

[9] 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).

[10] 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

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.

 

13 comments
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  1. I find myself taking breaks in my tasks to read these great articles. I’m sure though many of us don’t say it explicitly in each post here in IPW, thanks for the continued dedication to this great site.

  2. BTW: I have a continuation from a pre-AIA grant and publications paused and made me file an ADS as per AIA requirements. So there seems to be several AIA nuances to be aware of.

  3. Mr Quinn, good subject matter indeed. It is indeed as you imply, that the traps for the unwary are traps for non-Americans just as much as they are for Americans, for the reason you give, that the AIA purports to harmonise with ROW, but in fact does not.

    What I noticed in particular is that whereas, in ROW, it is very likely the case that the second Inventor to file will prevail over the first (I quote from above):-

    “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”

    Infinitessimally insignificant!

    Long ago, I uttered the thought that the AIA is a turbo-charged version of ROW FtF. In the ROW, the spoils go to the one who was first to file a fit-for-purpose patent application, that includes a full written description of the claimed subject matter that will go through to issue. The first to file just anything, likely gets nothing for him/herself, and fails to stop the later filer from getting that patent.

    By contrast, under the bizarre over-wide definition of the prior art in the AIA, you are (as I see it) lost if you are anything other than First to File (even if your disclosure is not yet ripe for filing).

    Whatever possesssed the drafters of the AIA to do this? Seriously, were they ignorant of the consequences of swinging the pendulum from one side of the ROW norm over to the other side? Or did they deliberately swing that pendulum over to the other side as an over-reaction to the deficiencies they perceived in the 1952 definition of the prior art?

    Paul Cole can speak eloquently on this subject, perhaps even at AIPLA..

  4. Afterthought: I recall criticism of EPC First to File, that it allows the growth of patent thickets, in which there is a multiplicity of ownership interests. So, could it be that the savage AIA definition of the prior art is deliberately aimed at stopping such thickets from developing (or if they should nevertheless occur, to provide a champion brush-clearing tool to get rid of them)?

  5. Further afterthought: On the subject of thickets, I find it troublesome that the First Filer under the AIA can grow his own thicket, unimpeded by his own prior filings. Am I to conclude that thickets of patents a Good Thing when under common ownership but a bad thing when under mixed ownership?

    Patents are supposed to nurture competition, not stifle it. So why skew the definition of the prior art, to let First Filer patent willy-nilly all his obvious follow-up modifications, developments and improvements, while preventing everybody else from patenting their own useful contributions to the art? This to me looks like a deliberate skewing of the definition of the prior art to favour Goliath over Daniel.

    I’m open to persuasion, that all these legal advantages, exclusive to the AIA, are needed to encourage Inventors to be first to file. I agree that patent thickets in mixed ownership can be a problem, although those industries where it regularly occurs seem to have found pragmatic ways to deal with it.

    So, who does defend the AIA Definition of the prior art? Where are the Papers that explain how it promotes progress and the general welfare better than the European definition of the state of the art?

  6. Bob Armitage has just such a paper MaxDrei.

  7. Yo, Max, get in the game. Promoting progress and the general welfare is an antiquated concept, started naively by a few guys a few hundred years ago. Oh sure, it helped America become the most innovative and richest country in the world, but let’s be realistic. The types of aristocracies that those few idealistic men thwarted would inevitably end up in charge again. And so they have. The original handful of idealistic men has been replaced by a handful of attorneys for multinational corporations, including the one mentioned in the comment above. “General welfare” is not in their vocabulary.

  8. Something like this:

    http://judiciary.house.gov/hearings/hearings%202012/Armitage%2005162012.pdf

    was it, anon, that you had in mind?

    But I’m more interested in the provisions of the AIA that carry over from the 1952 Statute, and on those I see nothing yet from Armitage.

    The provisions I point to are:

    1) basing obviousness attacks on patent specifications at the USPTO but not published by the USPTO till after the date of the Claim in view; and

    2) allowing obviousness attacks based on the filings of others but not those of the same Inventor.

    They do become more potent of course, when the prior art for obviousness puposes includes (pace AIA) earlier filings, later published, by Patent Offices other than the USPTO.

    Perhaps, anon, you can direct me more precisely to where Armitage deals with my Point?

  9. Sorry MaxDrei,

    I do not understand what you are looking for. Not sure what you mean by ‘carry over from the 1952 Statute’ when the rest of your post indicates that you want a ‘compare and contrast’ exposition with EP law.

    I do not think that such exists (nor in truth is all that important). Regardless of any hyperbole about matching an international standard (and the EP is not an international standard), patent law remains a sovereign law issue and there is no such thing as a world patent or a world patent law.

    That said, I do recognize that you wish to highlight any distinction on the treatment of what constitutes prior art for the purposes of anticipation versus obviousness.

    Perhaps you can explain in more detail why you feel that prior art for obviousness should be different than the prior art for anticipation. After all, here in the states obviousness already brings with it the unseemingly facade (albeit ‘facade’ may be too strong a word for legal fiction) that PHOSITA is somehow omniscient to ALL published work, where in truth, no actual such person of ordinary skill would be capable of such encyclopedic knowledge.

    Perhaps the fact that obviousness has a slightly forward-looking aspect to it (ob via – coming from in the road -which has an implicit meaning of in the road ahead) that allows such imminently published work to be counted – perhaps not. However, it must be kept in mind that the mere fact that the work does exist prior to invention by another (even if not published) would then bridge that time gap. After all, it is not to the inventor that obviousness is measured – it is to the legal fiction. In other words, the inventor’s work is not measured against what he inventor knows – or does not know – that obviousness is measured against. This is a subtle point that is easily overlooked.

    Your second point is interesting and is a direct carry over from the desired protection of the one year grace period. But as has been often pointed out, that protection is actually paper thin and will not cover obvious variants created by third parties, so your protest is not clear. Any perceived thicket that may occur will have an absolute one year moving bar, and will easily be defeated by any intervening public work of another.

    And finally, not that it may matter much to you, but my moniker is Anon with a capital A.

  10. MaxDrei,

    I would also point out that the link you provided – while substantial in content, is not all of what Mr. Armitage has had to say on the subject (in fact, the comments therein are geared more to the Office implementation rather than directly to the law itself).

  11. I replied, Anon, but my reply has not appeared. I didn’t save it. I am not starting all over again.

  12. You should consider an interview with entrepreneur and inventor Elizabeth Holmes of Theranos:

    http://online.wsj.com/article/SB10001424127887324123004579055003869574012.html?mod=WSJ_article_comments#articleTabs%3Darticle

  13. Disappointed to hear that MaxDrei, as I do often glean pearls of wisdom from you as to how you view EP law.