The University of Akron School of Law hosted a program on the new “America Invents Act (AIA)” on Oct. 14, 2011. The Act was signed into law on Sept. 16 and contains the most extensive changes to U.S. patent law since the Act of 1836.
The conference speakers included Marla Grossman, of American Continental Group; Dana Colarulli, the director of the Patent and Trademark Office’s Office of Government Affairs; Harold C. Wegner, of Foley & Lardner; Kelly Hyndman, of Sughrue Mion; John V. Biernacki, of Jones Day; and John Hornickel, of PolyOne Corp.
The AIA was six years in the making and followed on the heels of comprehensive studies of the U.S. patent system by the Federal Trade Commission and the National Academy of Sciences.
While various provisions of the AIA went into effect immediately, many other provisions will not take effect until either 12 or 18 months after enactment. The Patent and Trademark Office has established a website at www.uspto.gov/AmericaInventsAct that reviews the Act’s implementation. The agency is currently engaged in rulemaking with respect to a number of changes.
The law transitions the U.S. from a first–to-invent system to a first-inventor-to-file system. This change brings U.S. law into closer conformity with that of other countries.
To implement this change, the new law makes many changes to that section of the patent statute dealing with the issue of novelty. The impact of some changes is currently unclear, particularly as to what constitutes “prior art.” ‘Prior art’ is a term used to broadly describe the entire body of knowledge before a particular date that is relevant to an invention’s patentability. An inventor or other parties can disqualify an application from patentability. Unlike most countries, the U.S. has had a grace period of one year prior to the date the patent application is filed for activities of the inventor. The new law states that a disclosure made one year or less before the filing date shall not be prior art. It is currently unclear what prior art activities are considered disclosures.
The AIA also includes a number of provisions designed to improve patent quality. For example, it allow third parties to submit certain prior art to the Patent and Trademark Office to assist the agency in making patentability determinations and provides for a new post-grant opposition proceeding.
The AIA also expands upon the so-called prior user defense to a patent infringement suit. Prior to enactment of the AIA, such defense could only be asserted against a business method patent. The new law expands this defense to all areas of technology. In addition, while compliance with the best mode requirement is still required in order to obtain a patent, once issued, a patent may not be attacked on grounds it fails to disclose the best mode.
In another change that will impact on patent litigation, alleged infringers will be able to be joined in the same lawsuit only if the same accused product or process is involved. Before enactment of the AIA, multiple defendants could be joined in the same lawsuit where their only connection was the allegation that they infringed the same patent. Many lawsuits involved over a dozen defendants, which often led to “guilt by association” where there was overwhelming evidence against another defendant.
Further discussion of the AIA will take place during the annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy, which is co-sponsored by The University of Akron School of Law and the Sughrue Mion law firm. The program will be held Monday, March 19, 2012. Further information regarding the program will be forthcoming shortly.