The 2011 America Invents Act - The New and Improved Patent Law?
Attorney: Bernard S. Klosowski, Jr.
The America Invents Act (AIA) was enacted September 16, 2011 with the ostensible goals of removing barriers to innovation, expediting new products to market, and helping create jobs for American workers. Platitudes such as these were echoed time and again in Congress prior to passage of the AIA. For example, during the summer before AIA became law, Congressman Earl Blumenauer of Oregon proclaimed, “Madam Chair, I rise in support of H.R. 1249, which will help America maintain its distinction as the most innovative country in the world. For too long, independent inventors, small businesses, and America's leading universities and technology companies have been mired in a convoluted patent process that has stifled innovation and job creation. H.R. 1249 streamlines and clarifies the patent process, giving inventors and investors the certainty they need to expand their businesses and grow the economy.” In The House of Representatives, Remarks - America Invents Act, June 22, 2011, The Library of Congress.
So the AIA was passed to repair the “convoluted” U.S. patent process. And now? We have two sets of patent laws in effect for the next two decades. Until March 16, 2034, U.S. patent applicants, their patent attorneys, and judges will have to understand and apply the old patent law in tandem with the AIA, depending upon when a patent application was filed. One might be condemned a critic or skeptic for asking how the patent process has been “de-convoluted” by creating dual laws, but he would be forgiven for heresy as the AIA is unwrapped and its complexity revealed.
Of the many new AIA facets, perhaps greatest notoriety is in regard to the United States’ “first to invent” system, which is being replaced with a “first to file” system under the AIA. In part, the new provision is meant to “harmonize” the United States’ patent system with most of the rest of the world. Under the old U.S. law, the first inventor usually won an argument between two inventors claiming the same invention, so the “first to invent” rule prevented a “race” to file applications at the Patent Office. Under the AIA, the “first inventor to file” will most likely win – a situation akin to “possession is 9/10ths of the law” or more pointedly, a finder-keepers situation. Accordingly, the new rule may pressure inventors to file patent applications sooner than later to be sure they win the filing race to the Patent Office. This engineering may have unintended behavioral consequences. The new “first to file” rule may result in increased filings and in decreased patent quality, which ironically are two maladies that AIA supporters touted would be fixed under the new law.
Nevertheless, for the inventor who believes that someone beat them in a filing foot race to the Patent Office, a new AIA provision at 35 USC § 135 permits the later-filing inventor to institute an interference proceeding within one year of publication of the earlier-filed application. Alternatively, the later-filing inventor can bring a civil action under 35 USC § 291 within a year after a patent issues in order to argue that the first filer derived the invention from the later-filing inventor. In summary and in practical effect, the AIA first encourages inventors to race to file at the Patent Office then the law adds alternative remedies to be sure that the winner is actually a true inventor. This may be fair and reasonable standing in the shoes of a “true” inventor who independently invented at a later date, but it may prove to be more complex and costly than envisioned by law makers. On top of it all, these AIA “insurance” provisions do not take effect until March 16, 2013 − they are only applicable to patent applications filed a year and a half after September 16, 2011, the day AIA was enacted. So, inventors wishing for their patents to fall under the old patent law will want to file their applications before March 16, 2013.
Because the interference-derivation provision of AIA and many other facets of the new law take effect at staggered dates, only decades’ worth of time will tell whether AIA will, as advertised, remove barriers to innovation and create jobs. Presently, it is at least clear that intellectual property owners should not wait to decipher the new patent law. They would be prudent to determine how the old and/or new patent laws may apply to their inventions and sooner is better than later since the next AIA date is just around the corner.
Next time, we will decode another specific provision of the AIA.