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America Invents Act (AIA) – IP Summit Brussels

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As noted in an earlier post, the unitary patent and unified patent court in Europe was a hot topic of conversation at the IP Summit in Brussels recently. However, the unitary patent package was not the only major law change discussed and on 7 December 2012 I attended an informative session on “Filing Scenarios Before and After March 16, 2013” in relation to the America Invents Act (AIA).

This session was chaired by Eric Raciti from Finnegan with Malcolm T Meeks (Infineon Technologies AG) and Prof. Herb Munsterman (IIT Chicago-Kent College of Law) on the panel. The session focused on changes to the scope of prior art under AIA and also covered changes to the US grace period and new post-grant procedures that will be available to challenge granted US patents.

The critical date under the America Invents Act is 16th March 2013 when the US will move from a first-to-invent system to a first-inventor-to-file system, which is essentially a first-to-file system with a one-year grace period for disclosures by the inventor or derived from the inventor.

Prior art. As part of the changes being implemented the scope of prior art that is available to challenge the validity of patent applications and granted patents will increase.

Under the old statute, public use, offers for sale and sale of an invention in a foreign country would not be considered as prior art unless it appeared in a publication of some sort. The AIA however will remove such geographical limitations.

Also, under the old statute (§102(e) & the Hilmer doctrine), not all filing dates were treated equally. Essentially foreign priority dates of US patent applications were not considered both for purposes of effective filing date under § 102(e) and for serving as prior art under § 102(e). Non-US inventors who therefore filed in their home country before filing in the US were disadvantaged and their applications only became prior art in the US when either they were filed as a direct US application or an international application in English and designating the US was made.

Now, under AIA, new section § 102(d) means that an “effectively filed” date will be given to all priority filings with no geographical or language restrictions.

The above changes to the available prior art will increase the prior art available to an examiner and will, with any luck, result in stronger US patents being granted.

Third party observations. As noted in this press release the USPTO now allows third parties to submit relevant materials to patent examiners. This “crowd-sourcing” method of finding prior art was a pet project of outgoing Director of the USPTO David Kappos.

Grace period. The US patent system (Patent Act of 1952) offers a 12 month grace period. Essentially an inventor has one year from the time he or she discloses an invention within which to file a patent application. While the grace period will remain under AIA it appears the scope of such grace period will change. Eric Raciti suggested that the USPTO’s proposed rules could actually reduce the scope of the grace period. As he discussed in the September 2012 CIPA Journal (emphasis added by IPcopy):

According to the USPTO’s Proposed Rules [published 26 July 2012], the § 102(b)(1)(B) exception can only be invoked if the subject matter in the third party disclosure is substantially identical to the subject matter previously disclosed by the inventor. The Proposed Rules specify that even if the only differences between the inventor’s disclosure and the third party disclosure “are mere insubstantial changes, or only trivial or obvious variations,” the exception under §102(b)(1)(B) does not apply. The phrase “trivial or obvious variations” is not defined in the Proposed Rules and these are not established terms of art in the U.S. patent law.

It will be interesting to see what the final rules look like but if the above contention is correct then, if an inventor publishes details of his invention and a third party makes a subsequent publication that discloses a variant of the inventor’s invention then the third party disclosure will count as prior art against a later patent application made by the inventor.

It would seem that until the scope of the rules is known then on a practical level applicants should not look rely on the grace period to circumvent earlier disclosures of their invention. Instead, it appears prudent that the grace period should only be used as a last resort to try and recover some patentable subject matter following a disclosure. Further information on this topic can be found here.

Post grant proceedings. The AIA will introduce a couple of new post grant procedures. The Post-grant review procedure, which went into effect on 16 September 2012, but (with limited exceptions) is only available for patents with an earliest priority date of on or after 16th March 2013 to allow a third party to challenge the validity of a granted patent. In some ways similar to the EPO Opposition procedure it will be available during the first 9 months after grant.

The Inter Partes Review procedure went into effect on 16 September 2012. This procedure will only be available after the first 9 months following grant of a patent have passed (or any post-grant review has ended) and may only allow the validity to be challenged on the basis of patents and printed publications.

The post grant proceedings being introduced by the AIA will allow third parties to challenge granted patents in a powerful alternative to litigation.

Malcolm Meeks viewed these changes as making patents, on average, less valuable under the new system as they will be easier for third parties to challenge. Having said that he noted that individual patents that make it through any such challenges will be much stronger.

Mark Richardson        8 January 2013

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