America Invents Act Reforms Patent Filing and Review Processes

By Stephen Glazier

In the first major patent reform bill since 1983, the recently enacted Leahy-Smith America Invents Act makes substantial changes to patent filing and review practices. While some provisions of the law became effective upon signing, most of the provisions will not take effect until late summer 2012, following completion of rulemaking proceedings and adoption of implementing rules by the United States Patent and Trademark Office

This Act is expected to have extensive impact on patent practices in the telecom, media and technology industries. Overall, the effects of the AIA could increase the value of patents over time while increasing the speed and quality of action at the PTO. It remains unchanged that any time new telecom hardware, software or computer systems are developed, purchased or used, both offensive and defensive patent issues will be raised for the developer, seller, buyer or user. 

The reforms in the AIA are primarily procedural and administrative, not strategic, though the AIA is expected to have an extensive impact on patent practices. The AIA moves the U.S. towards a “first to file” patent system from the current “first to invent” patent system. As a result, the race to the PTO to obtain early filing dates for patent applications should accelerate. Significantly, the patenting of software, computer, and related business methods will continue, and the telecom, media and technology sector will continue to make extensive use of these types of patents. In addition, Supreme Court and Federal Circuit substantive patent case law has not been superseded by the AIA.

The PTO has interpreted the AIA to permit the office to accept requests for prioritized (expedited) patent applications when a special fee is paid, as of September 26, 2011. The PTO targets final disposition of these prioritized applications within 12 months of granting priority. For software, computer-related, and business method applications (where it is common to wait 3 years for a first office action), this acceleration should be a welcomed option at the PTO. The optional procedure to expedite patent applications applies to both new application filings and certain pending applications.

The AIA also created a post-grant review process to challenge any new U.S. patent in the PTO. Furthermore, a new inter partes (“between the parties”) review proceeding is also provided to alternatively challenge any new U.S. patent at the PTO. Furthermore, the AIA provides for a special post-grant review for new and existing business method patents during an 8-year transitional period. Finally, the new law provides a new defense to patent infringement for prior commercial use under certain circumstances. 

The next 12 months will provide further insight into how the AIA will affect patent practices as the PTO adopts new rules to implement the various sections of the AIA. The devil is in the details and, to be sure, there will be plenty of details. (A summary of the 150-page, 37-chapter AIA is available by clicking here)

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