GSB Vol. 17, NO. 6, Pg. 12. Changing the Landascape of Patent Law- The America Invents Act.

• Author: by George Medlock, Holly Hawkins and Joshua Weeks

Georgia Bar Journal

Volume 17.

GSB Vol. 17, NO. 6, Pg. 12.

Changing the Landascape of Patent Law- The America Invents Act

GSB JournalVol. 17, NO. 6April 2012Changing the Landascape of Patent Law- The America Invents Actby George Medlock, Holly Hawkins and Joshua WeeksOn Sept. 16, 2011, President Obama signed the Leahy-Smith America Invents Act (AIA) into law.(fn1) Implementation of this Act represents one of the most fundamental shifts in this area of law within almost 60 years.

The AIA is seen as a way of addressing many of the concerns that have arisen as patents have taken an increasingly important role in our society, namely, the typical three-year delay in obtaining a patent; concerns about the quality of patents, which lead to a perceived increase in frivolous lawsuits; the growth of lawsuits by non-practicing entities (NPEs), companies that do not practice a patented invention but instead own a patent covering an invention; and the lack of harmonization between procedural rules under the U.S. patent system as the U.S. Patent and Trademark Office (PTO) was also viewed as inadequately funded to address several of these challenges.(fn2)

While the AIA sets forth several modifications to patent law, there are five major changes required by the AIA that are of particular import, namely: (1) a switch from a first-to-invent system to a first-inventor-to-file system; (2) a replacement of interference proceedings with derivation proceedings; (3) litigation alternatives; (4) litigation reforms; and (5) fees.

The First-inventor-to-File System

One of the most significant changes to the patent system under the AIA is a change from the current "first-to-invent" system to a "first-inventor-to-file" (FITF) system for determining priority, which will be implemented on March 16, 2013.(fn3) In patent law, the priority date of a patent is a very important date. The earlier a priority date a patent has, the harder it is to find printed publications or other patents that existed before the priority date of a patent, commonly referred to as "prior art." Prior art can serve as a basis for showing that the invention disclosed in a patent was previously disclosed to the public or obvious and therefore not entitled to patent protection.

Under the first-to-invent system, the invention date, not the filing date, is the critical date for determining priority. Therefore, an inventor that was first-to-invent could rely on his invention date for priority if that date preceded another party's filing date covering the same invention. The first-to-invent system was initially considered to be beneficial for individual inventors and small companies with limited resources, because they were not required to "race" to the patent office to file a patent application to obtain an early priority date but instead could rely on their date of invention. However, confusion arose with respect to priority under this system, because it was often difficult to determine the date of invention.(fn4) In addition, the fact that the majority of the world's patent systems used a "first-to-file" system to determine priority(fn5) led to a push for reform in the United States.

Under the new FITF system, the filing date is the critical date for determining priority, not the actual date of invention.(fn6) The AIA distinguishes between the FITF system and a "true" first-to-file system. In a "true" first-to-file system, the filing date serves as a bar date to others claiming rights in a patent after the application has been filed. However, under the FITF system, an inventor is provided with a one-year grace period that prevents the inventor's disclosure of his own invention being used against him as prior art, so long as the inventor applies for patent protection within a year of that disclosure.(fn7) Under the new system, prior art will be measured as of the filing date, and it will typically include all publicly available prior art that existed as of the filing date anywhere in the world, with the exception of the inventor's own disclosures, so long as those occurred within a year of the filing date.(fn8)

Proponents of the FITF system claim that it will eliminate uncertainty, as the filing date is an objective date that can be easily determined, whereas the date of invention may be uncertain and may require corroborating evidence if disputed.(fn9) Opponents of the FITF system argue that it favors large corporations with the resources to quickly file numerous patent applications to the detriment of individual inventors and small business-es.(fn10) In an attempt to determine the impact of the FITF system, the AIA requires the chief counsel for advocacy of the small business association, in consultation with the general counsel of the PTO, to conduct a study of the impact of the AIA's FITF provisions on small businesses and submit a report within one year to the congressional Small Business and Judiciary...