obvIPat - Obviously Patentable

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Posts Tagged ‘America Invents Act’

The Prior Art Expansion Under the AIA

by Orlando Lopez

The patent reform introduced by the America Invents Act (AIA) constitutes the most radical set of changes in the US patent law since probably the first US patent code.  No longer is the date of invention important — the important date now is the effective filing date.  This change introduces a game-changing race to the patent office where the first to file wins.  The change in the US patent law also expands the references that can be used to prevent obtaining a patent, the so-called “prior art.”  This expansion in the prior art and the race to the patent office would also require a change in the IP protection strategy.  Although this is not a phrase that should be used in an election year, the response can be characterized as “FILE EARLY AND OFTEN.”

The expansion of the definition in the prior art can be seen by comparing section 102 of the patent code as it exists today,  to that which will be in effect after March 16, 2013, when the last part of the AIA comes into effect.  The expansion in the prior art can be described as having two components.  First, we can no longer swear back.  Swearing back was a process by which you would get rid of one reference by an affidavit that proves that you had invented before the effective date of the reference.  The other characteristic of the prior art on the AIA is globalization. We all know that, according to Tom Friedman, the world is flat and now the world of a US patent code is also flat.  Comparing section 102 of the code between now and after the AIA is fully implemented, the differences are:

1)  While presently you cannot obtain a patent if the claimed invention was known or used by others in this country, there are no territorial limitations in the AIA.  You cannot obtain a patent if the invention was in public use, on sale or otherwise available to the public anywhere in the world.

2)  While presently those acts have to happen before the invention by the applicant, a patent in the AIA is precluded if the claimed invention was in public use, on sale or otherwise available to the public before the effective filing date. Read the rest of this entry »

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A Balanced View of Post-Grant Review

by Orlando Lopez

A large portion of the rules needed to implement the America Invents Act (AIA) will go into effect on September 16, 2012.  The rules for post-grant review, although effective September 16, 2012, will not actually be applicable until March 16, 2013.  As these deadlines are approaching, we present in this and a following post, some thoughts and views on the post-grant review and the expansion of the references available for denying a grant of a patent under the US first-to-file system.  These thoughts were presented at the Navy Intellectual Property Seminar and the Hispanic National Bar Association annual convention earlier this year.

The patent reform bill, which became the America Invents Act, had a gestation period longer than any animal, but even in the early incarnations, a post-grant review was included.  Almost all other patent systems have some form of post-grant review, such as the European opposition.  The stated purpose of Congress in adding this to our patent system was to provide an alternative to patent litigation and to improve the quality of patents; however, as stated in the last committee report, there was also a concern that harassment of the patent owner should be prevented.  Our version of post-grant review is shaped by these ideas. Read the rest of this entry »

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