Book Review: Patents After the AIA: Evolving Law and Practice

By David Kappos
May 24, 2016

patents-after-aiaPatents After the AIA: Evolving Law and Practice (Alan J. Kasper, Brad D. Pedersen, Ann M. Mueting, Gregory D. Allen and Brian R. Stanton), is published by the American Intellectual Property Law Association (AIPLA) and Bloomberg BNA, 2016.

Patents After the AIA: Evolving Law and Practice, a collaborative effort by Alan J. Kasper, Brad D. Pedersen, Ann M. Mueting, Gregory D. Allen and Brian R. Stanton, is an essential resource for, among others, patent applicants and patent owners, intellectual property scholars, and intellectual property practitioners, including patent prosecutors, litigators, and transactional attorneys. Delving deeply into the Leahy-Smith America Invents Act of 2011 (AIA), the most comprehensive revision to U.S. patent law since 1952, the treatise provides an “all- in” exploration of the AIA, including its historical context, legislative history, and regulatory framework. The treatise explains “prior art,” grace period, and exceptions both globally and practically. Patent filing details and mechanics are covered, providing a roadmap for patent applicants. Challenges to patentability and post-issuance review are discussed in detail. Transitional considerations for, and practical considerations after, the AIA are addressed as is the critical matter of global harmonization.

As the world of patent law has become more complex and continues to evolve, it is important to have a comprehensive, up-to-date resource for those in the patent field. The authors present a thorough, comprehensible encyclopedia covering the U.S. patent world, post-AIA. The final chapter of the treatise points readers to an optimistic future that “foreshadows significant confluence of best practices in the near future.”

The treatise presents both practical and strategic advice regarding the preparation, prosecution, evaluation, enforcement, and litigation of U.S. utility patents after the passage of the AIA and effectively conveys the material in a well-organized fashion. Detailed coverage of U.S. patent law, including pre-AIA context and associated rules and guidelines, are incorporated. Particularly impressive are the “Practical Tips” the authors include in highlighted areas on many pages. Numerous graphs, tables, and pictorial illustrations assist readers’ comprehension of the material. Each chapter begins with a highly detailed Table of Contents, subdivided for ease of use. The authors write clearly and include helpful cross-references to case law, USPTO practice matters, legislation, and primary and secondary sources.

The targeted audience will appreciate all aspects of this 1900+ page treatise. Some readers may read the entire treatise if time allows and will gain a thorough education of patents in the post-AIA world. Other practitioners, students, and scholars now have available a highly organized reference book affording easy access to targeted issues in the patent arena.

The Author

David Kappos

David Kappos is a Partner at Cravath, Swaine & Moore LLP in New York, NY. He was Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office from August 2009 to January 2013. Prior to leading the USPTO, Mr. Kappos served as Vice President and Assistant General Counsel for Intellectual Property at IBM. For more information and to contact Mr. Kappos please visit his firm profile page.

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Discuss this

There are currently 4 Comments comments.

  1. Prizzi's Glory May 24, 2016 8:09 am

    The book seems only purchasable via Bloomberg BNA.

    http://www.bna.com/patents-aia-evolving-p57982059262/

    It does not seem to be available in an electronic version — something that I find extremely irritating for this type of book.

  2. Keith Larson May 24, 2016 9:11 am

    This Treatise is a fabulous reference, beginning with an insightful development of patent law and particularly the America Invents Act. What I find to be most helpful are a multitude of scenarios which are illustrated with timeline diagrams; these and the explanations help to unravel the nuances of the new law. I own the book, and I was fortunate to meet and receive an autograph from all five authors at the AIPLA Spring Meeting. It is a must-own for any patent practitioner!

  3. Night Writer May 24, 2016 10:27 am

    Can anyone give me one example that would make this worth buying? If I want to get caught up on a topic, I just figure out the most recent case and work my way backwards.

  4. Eve (Logan) Landers May 25, 2016 10:52 am

    It seems a shame that the book is not available in a searchable, electronic format.