So you think you know patent law, part 1
The Leahy-Smith America Invents Act (P.L. 112-29) has changed the patent law landscape more thoroughly than any legislation since the Patent Act of 1952. The First-Inventor-to-File (FITF) provisions of the AIA have received the greatest attention. However, the AIA is crowded with innocuous-looking amendments and changes expressed in language that is not always internally consistent.
Naturally, the blogosphere is rampant with postings about the AIA that are often ill-founded or biased toward a desired conclusion. In this three-part series, I’m going to try to offer an unbiased overview of the changes in patent law and practice brought about by enactment of the Leahy-Smith Act. We’ll begin by looking at changes to the basic patenting process. We'll then look at issues such as these: an end to interferences (essentially replaced by derivation proceedings), modifications to the reexamination process, the introduction of a new review process, prioritized examination and business method patents.
Inventions, Novelty, Obviousness
The big change, of course, is FITF (First Inventor to File). A traditional first-to-file patenting system, such as is common worldwide, requires complete novelty before a patent can be issued — there are no grace periods whatsoever.
The U.S. Congress did not go quite that far. They retained a one-year grace period for publication by the inventor but eliminated any third-party grace period — if someone in Czechoslovakia publishes a key feature of the invention the day before a U.S. inventor files an application, that publication can be used as prior art in the examination of the patent.
The status of an Internet "publication" has finally been resolved by the AIA. The functional definition of prior art now reads “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public anywhere before the effective filing date of the claimed invention.” It would appear that a disclosure on a website available to the public (not necessarily freely available) now qualifies the invention as prior art, whereas an email sent without the evident intent to disclose the invention publicly (probably) does not. I’m sure this will be tested in court. Note also that such disclosure can take place in any part of the world, rather than being restricted to the United States.
The most significant effect of these changes on IP strategy is to file early and often! It is difficult to argue against a filing date. The funds required to implement this strategy can be minimized using the same tools as existed prior to the AIA — provisional patent applications and rights to priority. Statutory Invention Registrations are a thing of the past, which few will miss.
The AIA contains a new feature aimed primarily at individual inventors and early-stage start-ups: the micro-entity. Fees for a small entity are still reduced by 50 percent, but there is now the micro-entity, for which the fees are reduced by 75 percent. A micro-entity must qualify as a small entity, and the applicant must have been named on fewer than 5 previously filed U.S. patent applications, provisional applications or PCT applications. The applicant must have a gross income less than 3 times the IRS-determined median household income and must not have assigned or be obligated to assign the patent or a license thereto to an entity that does not qualify as a micro-entity itself. Although these are rather stringent requirements, this concern and support for the individual inventor in the AIA does the Congress credit.
Next week, I will look at changes in the best mode requirement, at the new process of prioritized examination, and at the elimination of classes of inventions whose patentability has been questioned under 35 U.S.C. 101 or that some held to be inappropriate objects for patent protection in the past. In week 3, we’ll look at changes to the various processes and strategies for challenging the validity of an issued patent.