by Richard A. Catalina Jr.
On September 16, 2011, President Obama signed into law the America Invents Act (AIA), the most ambitious patent reform legislation to be enacted in decades. Among other objectives, the AIA seeks to harmonize U.S. patent law with global patent regimes and remedy many flaws in the current U.S. patent system, particularly in light of the enormous technological advancements over the past 20 years.
While the new patent law is a complex piece of legislation to be implemented over the next 18 months, there are a number of new issues for patent practitioners, inventors and businesses to immediately consider. The following may be the three most significant changes to the patent law:
First to Invent Rule. When two applications for the same invention are simultaneously pending before the United States Patent and Trademark Office, the USPTO must determine who is legally entitled to pursue the patent on the invention. Under current law, the invention belongs to the applicant who invented it first – which is determined in a complex legal proceeding known as an "Interference." The AIA changes that: the party legally entitled to pursue the patent on the invention shall be the applicant who first filed its patent application. As a result, entrepreneurs and budding inventors must diligently reduce conception to practice and immediately file the application on the invention.
Assignees May Prosecute Applications. Under current law, a patent application is always filed and prosecuted in the name of the inventor(s), who may assign or be legally obligated to assign the application to a third party (such as an employer). However, the patent always issues in the name of the inventor(s). The AIA now allows assignees to take legal control of the prosecution, with the resultant patent being issued in the name of the assignee.
Post-Grant Review. The AIA creates two new review proceedings to challenge issued patents: an "inter partes" review and a "post grant" review. The inter partes review process considers allegations by third parties that the issued patent should be invalidated based on existing prior art. The post grant review proceeding considers allegations of invalidity on any grounds, but it must be filed within 9 months of the patent’s issuance. The USPTO will implement new administrative rules to regulate both procedures.
The AIA addresses many more issues and is highly sophisticated. Entrepreneurs, particularly those working with innovation, are well advised to consult a knowledgeable patent practitioner regarding the full impact of the AIA on their business model.
Richard A. Catalina Jr., of counsel, is an Intellectual Property, Internet and Technology lawyer at Szaferman, Lakind.