cbareport_Oct12 - page 5

October 2012 CBA REPORT
cover article
he Leahy-Smith America Invents
Act (“AIA”),
enacted September
16, 2011, was the most significant
U.S. patent legislation in more than
175 years. While most of its provisions
have already gone into effect, the most
significant change, first-to-file, becomes
effective March 16, 2013. For many busi-
nesses, especially small companies and
start-ups, it is imperative that they seek
to protect their innovations through
The AIA did not change
this. However, many of the changes
implemented by the AIA, particularly
first-to-file, will require adjustments on
the part of patent applicants.
Background of the AIA
The AIA was originally intended to
fix a patent system which many believed
was broken. So-called “patent trolls,”
companies whose only purpose is alleged
to be acquiring patents and suing others
for patent infringement, were decried as
taking unfair advantage of a system in
need of repair. Others sought to bring
U.S. patent law in closer alignment with
foreign patent laws.
Patent reform was a long and difficult
process. Many of the proposed reforms
pitted one industry (e.g., software
companies) against another (e.g., phar-
maceutical companies). As a result, even
though the changes in U.S. patent law
were significant, more drastic measures
did not survive.
And, in the process of
amending the bill to achieve passable
legislation, Congress created significant
uncertainties which will take years to
Patent Basics
A patent grants to an inventor (or
their assignee) the right to exclude others
from making, using, selling or import-
ing the patented invention. In order to be
patentable, an invention must be useful,
novel (new) and unobvious. The latter
two requirements are evaluated in light
of the “prior art”—in essence, everything
that came before the invention. Of course
this is an oversimplification of what
constitutes the prior art upon which pat-
entability is determined, as the current
law in that regard is quite complex. And,
it’s about to become even more compli-
Overview of Changes
Below is a summary of the some of
the more significant provisions of the
AIA and the effective date for each.
While a detailed discussion of the
above changes is beyond the scope of the
present article, several are particularly
Prioritized Examination
One of the least controversial aspects
of the AIA is the introduction of priori-
tized examination. Currently it takes, on
average, about three years for a pat-
ent to issue. By requesting prioritized
examination, successful applicants can
obtain a patent in less than 12 months.
In addition to the regular filing fees of
$1,250 ($625 for small entities
), an ad-
ditional $5,230 ($2,830 for small entities)
is required for prioritized examination.
Although expensive, expediting ex-
amination may be worthwhile for those
seeking to enforce their patent or as a
way to attract investors.
Challenging Patent Validity
For years there have been grow-
ing complaints over patents of dubious
validity. Although prior law allowed
competitors to request reexamination of
a patent, most opted to challenge patent
validity in court. The AIA adds two new
mechanisms for challenging patent valid-
ity at the Patent Office, and expands the
ability of third parties to submit prior art
during the examination process.
Previously, third parties were permit-
ted to submit prior art relevant to the
patentability of a pending application,
but only within a two month window
after publication of the application
without any comments as to relevancy of
the submitted material. The AIA expand-
ed the submission window to the later of
6 months from the date of publication
or the date of the first office action on
the merits. In addition, third parties are
now permitted to explain to the patent
examiner the relevancy of the submitted
For issued patents, the AIA created
Post Grant Review (“PGR”) and Inter
Partes Review (“IPR”) proceedings. A
petition for PGR must be filed within
9 months after a patent issues, and can
be used to challenge the validity of the
patent on any grounds (including, for
example, that the patent does not ad-
equately describe or enable the claimed
invention). Unlike PGR, the IPR process
can only be used to challenge the validity
of a patent on prior art grounds. While
Patent Reform:
Raising the Bar?
By Martin J. Miller
1,2,3,4 6,7,8,9,10,11,12,13,14,15,...40
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