The America Invents Act

The new act's legislative gestation lasted for more than six years. Only once before, in enacting the American Inventors Protection Act of 1999, did Congress take so long to bring a new patent law into the world.

Being the lengthiest patent act of all time ' and the slowest to transit through Congress ' constitutes, at best, a slew of uninspiring superlatives. They hardly suggest, for instance, that this new congressional work product might one day be acknowledged not just as a significant advance in U.S. patent law, but also as the most significant since the first Congress crafted the first patent act in 1790.

To make good on such a brash and bold aspiration would be to fulfill a very tall order, indeed. It would require that the new law surpass in its implications and affect the Patent Act of 1836 (creating the Patent Office and the modern system of patent examination) and the 1952 Patent Act (providing a complete and cogent restatement of all U.S. patent law from the ground up under a full statutory recodification). In other words, the America Invents Act needs to achieve nothing short of extraordinary credentials to top the significance of these two great patent acts of the 19th and 20th centuries.

So, just why might the AIA someday realize such an outsized potential? Because, for proponents, the new law holds the promise of accomplishing two things, each of which is potentially profound, and each of which applies not only to traditional markets, but to e-commerce as well.

The first possible accomplishment is a revolution in the criteria by which a new invention can be judged to have been validly patented in the United States. The new act limits and then reshapes patenting rules to those that, individually and collectively, are transparent, objective, predictable and simple. It also successfully retains ' even enhances ' the historic inventor-friendly and collaboration-friendly features that have long set U.S. patent law apart from patent systems around the world.

The second potential impact is more ambitious: that our new patent law will serve as a beacon to guide future changes in foreign patent laws so that in decades beyond now, foreign patent laws would come to be built around the very same principles Congress enshrined in our new law. Should this potential be realized, greater harmonization of the world's patent laws may come to mean nothing more than foreign patent laws adopting the mold and model of America Invents Act provisions.

Domestic Patent Principles Revolutionized

The New Law Is TOPS

The proponents of the AIA sought a new patent law ' and a reformed patent system ' operating with greater transparency, objectivity, predictability and simplicity in the determination of whether a valid patent could be granted on an invention. To a quite stunning degree, those proponents got what they were seeking with the enactment of the AIA. A breakdown of those sought-after elements follows.

Transparency

Once the AIA takes full effect (in Sept. 2013), only information that has become available to the public before an inventor seeks a patent for an invention ' or had become publicly available from an earlier patent filing by someone else ' will be used to determine whether the invention to be patented is sufficiently different from pre-existing knowledge to merit a patent. To achieve this result, the America Invents Act erases from U.S. patent law an array of archaic principles and practices that resulted in secret knowledge or secret activities ' sometimes secret activities undertaken by the inventor and other times secret work done by third parties ' being cited to prevent a patent from being issued or to destroy its validity once granted.

Objectiveness

In a similar manner, the new statute removes from existing patent law subjective tests that have historically been considered in the assessment of whether a patent is valid.

For example:

• When did the inventor first think of the invention in its completed form?
• On the day of the patent filing, what did the inventor contemplate would be the best mode for practicing the invention?

These types of subjective inquires have no relevance under the AIA. This full objectivity in patenting principles will be particularly relevant in assessing whether the inventor's patent filing sufficiently disclosed the new invention. Henceforth, a sufficient disclosure rests on two objective standards: whether the actual embodiments of the claimed invention are properly identified in the patent, and whether those embodiments could be put to a practical and substantial use based on the information provided by the inventor in the patent.

Predictability

To a remarkable extent, the new law secures greater predictability in the assessment of a patent's validity by removing unneeded patent law concepts that were fact-intensive and required much discovery during lawsuits to resolve. What remains is a patent law focused on legal standards in preference to extensive factual inquiries.

Predictability is enhanced for inventors through a set of new remedial and “safe harbor” provisions aimed at permitting an inventor to address, and rectify, errors and omissions in the information provided to the U.S. Patent and Trademark Office prior to the grant of the patent:

• If an inventor is incorrectly named in the patent, then the naming of the inventor can be more readily corrected.
• If the inventor supplied a deficient oath of inventorship, then a corrected substitute can be more readily provided and accepted.
• If other information was missing or incorrect during the original examination of the patent, the missing or corrected information can now be provided and considered in a new procedure that is specifically tailored for this purpose.

In each of these respects, patents will become more predictably valid and predictably enforceable.

Simplicity

What the AIA has in essence done is to boil the entirety of U.S. patent law down to a set of four largely legal questions and standards that, while they fully protect the public from overly broad or overly vague patents, require little discovery and minimal fact-finding. In a sentence, once the law fully takes hold, the validity for a patent will require no more than that an inventor's claimed invention be confined to subject matter that is:

1. Sufficiently different from what was available to the public (or previously disclosed in a publicly available patent filing made by someone else) as of the date that the inventor's patent was sought;
2. Sufficiently disclosed so that the actual embodiments of the invention are identified and can be put to a substantial and practical use;
3. Sufficiently definite so that a skilled person reading the patent knows what is and is not being patented; and
4. Sufficiently concrete so that whatever is claimed in the patent is not excessively conceptual or otherwise abstract in character.

Once the new patent law is fully implemented, patents granted under it will be valid or invalid based on whether these four legal criteria are met, producing a patent law its proponents contend is TOPS: transparent, objective, predictable and simple. Indeed, by being TOPS, basing patenting on information available to the public and largely restricting the law to legally rather than factually grounded tests for patenting, it becomes possible that in much patent litigation, little ' perhaps no ' discovery from the inventor may be of any relevance to the validity of a patent. This, of course, would represent a profound reversal of the situation that applies under existing U.S. patent law.

Much Friendlier Act

Making the substantive patent law simpler and more transparent was, however, only the beginning of the benefits supporters now tout. The United States has long recognized a “grace period” during which inventors who disclosed their inventions during the year before seeking patents were not subject to their own disclosures being used against them to destroy the validity of their patents.

The America Invents Act not only continues these protections for inventors, but enhances them with a guarantee to the first inventor to publicly disclose an invention of the right either to patent the invention, provided a patent filing is made during the one-year grace period after the disclosure, or to dedicate the invention to the public, in the event the inventor elects not to seek a patent.

The same can be said for the so-called “collaboration-friendly” features of U.S. patent law. In 1999, and again in 2004, Congress amended patent law to protect coworkers, and later to protect all individuals working collaboratively under joint research agreements, from having their respective patent filings cited against one another as “prior art.” Prior to these changes, an earlier-filed patent application of one such coworker or collaborator could be cited as grounds for holding the later patent filings of any others unpatentable, even if the earlier patent filing had not become public at the time the later patent filing was made.

The AIA reinforces these unique collaboration-friendly features of U.S. patent law by providing that such earlier patent filings cannot be cited to show either lack of novelty or obviousness in the later patent filing of another coworker or collaborator. The ironclad protections of this type now found in U.S. patent law are unprecedented; foreign patent systems typically hamper collaborative work by allowing all of the earlier patent filings of inventors, coworkers and other collaborators to be cited as prior art to destroy the novelty of later-filed patents within the same organization or joint research group.

Looking globally across patent systems today, it is clear that only one patent system now exists that fully recognizes the realities of invention in the 21st century. In an era of cooperation and collaboration among research organizations, it is essential that patenting principles reflect that reality. The U.S. patent law now embodies the international “gold standard” for protecting the fruits of collaborative research ' and can be credibly monikered as the world's first truly 21st-century patent law.

U.S. Sets Public Patenting Role

As early as 1980, Congress recognized that the 1836 model of patent examination was deficient in failing to provide any formalized means for public participation in the patenting process. In that year, Congress passed a bill providing for the ex parte reexamination of previously issued patents, on the limited ground of whether a patent or other publication raised a substantial new question of patentability. These provisions were subsequently broadened in 1999 under the American Inventors Protection Act to add an inter partes re-examination procedure.

The America Invents Act phases out the 1999 inter partes procedure and offers what could prove to be the world's best provisions for public participation in the patenting process. First, the new law provides effective public participation early in the patenting process ' before a patent examiner makes a decision to issue a patent. It does so by providing a formal mechanism for submitting information relevant to whether the subject matter for which a patent is being sought is new and non-obvious ' sufficiently different from the prior art to merit issuing a patent.

In a more sweeping set of statutory changes, the replacement for the 1999 re-examination law provides that the patent owner and someone challenging a patent's validity can receive a prompt and fair adjudication of each significant validity issue raised by the challenger.

The new procedures are termed post-grant review and inter partes review, with the first available only during the period immediately after a patent issues and the latter available thereafter throughout the life of the patent.

These replacement procedures are to be conducted by legally trained, technically competent administrative patent judges, not (as under current law) patent examiners. They can be initiated only through a request that provides all the legal arguments and factual support for moving ahead with the proceeding at the time the request to challenge the patent is initially lodged with the Patent and Trademark Office. Also, they are to be confined to addressing only issues where a serious question of validity has been established, an issue that is more likely than not to invalidate the patent or for which at least a reasonable likelihood of invalidation exists.

As a result of being “front loaded” with the relevant evidence and arguments of the challenger and limited to truly serious questions of patent validity, each of these new proceedings is subject to a one-year statutory deadline to reach a final decision. Because of the legal nature of the patent validity issues under the AIA ' and the limited nature of the factual matters that will underlie those legal determinations ' the new procedures provide for limited discovery, ensuring fairness while tightly controlling the time and costs required for a final resolution.

Again, the promise of the new law is nothing short of revolutionary. By moving away from the so-called opposition procedures used in Europe since the 1970s, where the European Patent Office typically takes five times ' even 10 times ' as long to resolve a “patent opposition” as the new U.S. law will permit, the new U.S. post-grant regime, if effectively implemented, may well earn the status of international gold standard for defining the mechanisms for public participation in the patenting process.

Toward Global Patent Cooperation, Harmonization

The America Invents Act ' the world's first truly 21st-century patent law ' contains all the elements needed for a patent system to operate effectively, efficiently, economically and equitably. If the decade ahead yields greater international patent cooperation and harmonization among patent systems around the world, then the starting point for that effort should lie in the incorporation of its provisions into patent laws around the globe.

Should that promise be realized, then the AIA will have realized its full potential as the most significant patent act since 1790, not only for the United States, but also for inventors and creators everywhere, as well as those who invest in the creation of new inventions, those who are employed producing and selling them, and, of course, for people who are then able to benefit from these new inventions as consumers.

Last fall, the Leahy-Smith America Invents Act, H.R. 1249 ' all 150 pages of it ' became law.

The law is, no question, significant ' even record-setting ' patent legislation.

The America Invents Act (AIA) is by far the lengthiest patent act in U.S. history ' more than double the size of the bill creating the 1952 Patent Act, which recodified the entirety of U.S. patent law from scratch.

The new act's legislative gestation lasted for more than six years. Only once before, in enacting the American Inventors Protection Act of 1999, did Congress take so long to bring a new patent law into the world.

Being the lengthiest patent act of all time ' and the slowest to transit through Congress ' constitutes, at best, a slew of uninspiring superlatives. They hardly suggest, for instance, that this new congressional work product might one day be acknowledged not just as a significant advance in U.S. patent law, but also as the most significant since the first Congress crafted the first patent act in 1790.

To make good on such a brash and bold aspiration would be to fulfill a very tall order, indeed. It would require that the new law surpass in its implications and affect the Patent Act of 1836 (creating the Patent Office and the modern system of patent examination) and the 1952 Patent Act (providing a complete and cogent restatement of all U.S. patent law from the ground up under a full statutory recodification). In other words, the America Invents Act needs to achieve nothing short of extraordinary credentials to top the significance of these two great patent acts of the 19th and 20th centuries.

So, just why might the AIA someday realize such an outsized potential? Because, for proponents, the new law holds the promise of accomplishing two things, each of which is potentially profound, and each of which applies not only to traditional markets, but to e-commerce as well.

The first possible accomplishment is a revolution in the criteria by which a new invention can be judged to have been validly patented in the United States. The new act limits and then reshapes patenting rules to those that, individually and collectively, are transparent, objective, predictable and simple. It also successfully retains ' even enhances ' the historic inventor-friendly and collaboration-friendly features that have long set U.S. patent law apart from patent systems around the world.

The second potential impact is more ambitious: that our new patent law will serve as a beacon to guide future changes in foreign patent laws so that in decades beyond now, foreign patent laws would come to be built around the very same principles Congress enshrined in our new law. Should this potential be realized, greater harmonization of the world's patent laws may come to mean nothing more than foreign patent laws adopting the mold and model of America Invents Act provisions.

Domestic Patent Principles Revolutionized

The New Law Is TOPS

The proponents of the AIA sought a new patent law ' and a reformed patent system ' operating with greater transparency, objectivity, predictability and simplicity in the determination of whether a valid patent could be granted on an invention. To a quite stunning degree, those proponents got what they were seeking with the enactment of the AIA. A breakdown of those sought-after elements follows.

Transparency

Once the AIA takes full effect (in Sept. 2013), only information that has become available to the public before an inventor seeks a patent for an invention ' or had become publicly available from an earlier patent filing by someone else ' will be used to determine whether the invention to be patented is sufficiently different from pre-existing knowledge to merit a patent. To achieve this result, the America Invents Act erases from U.S. patent law an array of archaic principles and practices that resulted in secret knowledge or secret activities ' sometimes secret activities undertaken by the inventor and other times secret work done by third parties ' being cited to prevent a patent from being issued or to destroy its validity once granted.

Objectiveness

In a similar manner, the new statute removes from existing patent law subjective tests that have historically been considered in the assessment of whether a patent is valid.

For example:

• When did the inventor first think of the invention in its completed form?
• On the day of the patent filing, what did the inventor contemplate would be the best mode for practicing the invention?

These types of subjective inquires have no relevance under the AIA. This full objectivity in patenting principles will be particularly relevant in assessing whether the inventor's patent filing sufficiently disclosed the new invention. Henceforth, a sufficient disclosure rests on two objective standards: whether the actual embodiments of the claimed invention are properly identified in the patent, and whether those embodiments could be put to a practical and substantial use based on the information provided by the inventor in the patent.

Predictability

To a remarkable extent, the new law secures greater predictability in the assessment of a patent's validity by removing unneeded patent law concepts that were fact-intensive and required much discovery during lawsuits to resolve. What remains is a patent law focused on legal standards in preference to extensive factual inquiries.

Predictability is enhanced for inventors through a set of new remedial and “safe harbor” provisions aimed at permitting an inventor to address, and rectify, errors and omissions in the information provided to the U.S. Patent and Trademark Office prior to the grant of the patent:

• If an inventor is incorrectly named in the patent, then the naming of the inventor can be more readily corrected.
• If the inventor supplied a deficient oath of inventorship, then a corrected substitute can be more readily provided and accepted.
• If other information was missing or incorrect during the original examination of the patent, the missing or corrected information can now be provided and considered in a new procedure that is specifically tailored for this purpose.

In each of these respects, patents will become more predictably valid and predictably enforceable.

Simplicity

What the AIA has in essence done is to boil the entirety of U.S. patent law down to a set of four largely legal questions and standards that, while they fully protect the public from overly broad or overly vague patents, require little discovery and minimal fact-finding. In a sentence, once the law fully takes hold, the validity for a patent will require no more than that an inventor's claimed invention be confined to subject matter that is:

1. Sufficiently different from what was available to the public (or previously disclosed in a publicly available patent filing made by someone else) as of the date that the inventor's patent was sought;
2. Sufficiently disclosed so that the actual embodiments of the invention are identified and can be put to a substantial and practical use;
3. Sufficiently definite so that a skilled person reading the patent knows what is and is not being patented; and
4. Sufficiently concrete so that whatever is claimed in the patent is not excessively conceptual or otherwise abstract in character.

Once the new patent law is fully implemented, patents granted under it will be valid or invalid based on whether these four legal criteria are met, producing a patent law its proponents contend is TOPS: transparent, objective, predictable and simple. Indeed, by being TOPS, basing patenting on information available to the public and largely restricting the law to legally rather than factually grounded tests for patenting, it becomes possible that in much patent litigation, little ' perhaps no ' discovery from the inventor may be of any relevance to the validity of a patent. This, of course, would represent a profound reversal of the situation that applies under existing U.S. patent law.

Much Friendlier Act

Making the substantive patent law simpler and more transparent was, however, only the beginning of the benefits supporters now tout. The United States has long recognized a “grace period” during which inventors who disclosed their inventions during the year before seeking patents were not subject to their own disclosures being used against them to destroy the validity of their patents.

The America Invents Act not only continues these protections for inventors, but enhances them with a guarantee to the first inventor to publicly disclose an invention of the right either to patent the invention, provided a patent filing is made during the one-year grace period after the disclosure, or to dedicate the invention to the public, in the event the inventor elects not to seek a patent.

The same can be said for the so-called “collaboration-friendly” features of U.S. patent law. In 1999, and again in 2004, Congress amended patent law to protect coworkers, and later to protect all individuals working collaboratively under joint research agreements, from having their respective patent filings cited against one another as “prior art.” Prior to these changes, an earlier-filed patent application of one such coworker or collaborator could be cited as grounds for holding the later patent filings of any others unpatentable, even if the earlier patent filing had not become public at the time the later patent filing was made.

The AIA reinforces these unique collaboration-friendly features of U.S. patent law by providing that such earlier patent filings cannot be cited to show either lack of novelty or obviousness in the later patent filing of another coworker or collaborator. The ironclad protections of this type now found in U.S. patent law are unprecedented; foreign patent systems typically hamper collaborative work by allowing all of the earlier patent filings of inventors, coworkers and other collaborators to be cited as prior art to destroy the novelty of later-filed patents within the same organization or joint research group.

Looking globally across patent systems today, it is clear that only one patent system now exists that fully recognizes the realities of invention in the 21st century. In an era of cooperation and collaboration among research organizations, it is essential that patenting principles reflect that reality. The U.S. patent law now embodies the international “gold standard” for protecting the fruits of collaborative research ' and can be credibly monikered as the world's first truly 21st-century patent law.

U.S. Sets Public Patenting Role

As early as 1980, Congress recognized that the 1836 model of patent examination was deficient in failing to provide any formalized means for public participation in the patenting process. In that year, Congress passed a bill providing for the ex parte reexamination of previously issued patents, on the limited ground of whether a patent or other publication raised a substantial new question of patentability. These provisions were subsequently broadened in 1999 under the American Inventors Protection Act to add an inter partes re-examination procedure.

The America Invents Act phases out the 1999 inter partes procedure and offers what could prove to be the world's best provisions for public participation in the patenting process. First, the new law provides effective public participation early in the patenting process ' before a patent examiner makes a decision to issue a patent. It does so by providing a formal mechanism for submitting information relevant to whether the subject matter for which a patent is being sought is new and non-obvious ' sufficiently different from the prior art to merit issuing a patent.

In a more sweeping set of statutory changes, the replacement for the 1999 re-examination law provides that the patent owner and someone challenging a patent's validity can receive a prompt and fair adjudication of each significant validity issue raised by the challenger.

The new procedures are termed post-grant review and inter partes review, with the first available only during the period immediately after a patent issues and the latter available thereafter throughout the life of the patent.

These replacement procedures are to be conducted by legally trained, technically competent administrative patent judges, not (as under current law) patent examiners. They can be initiated only through a request that provides all the legal arguments and factual support for moving ahead with the proceeding at the time the request to challenge the patent is initially lodged with the Patent and Trademark Office. Also, they are to be confined to addressing only issues where a serious question of validity has been established, an issue that is more likely than not to invalidate the patent or for which at least a reasonable likelihood of invalidation exists.

As a result of being “front loaded” with the relevant evidence and arguments of the challenger and limited to truly serious questions of patent validity, each of these new proceedings is subject to a one-year statutory deadline to reach a final decision. Because of the legal nature of the patent validity issues under the AIA ' and the limited nature of the factual matters that will underlie those legal determinations ' the new procedures provide for limited discovery, ensuring fairness while tightly controlling the time and costs required for a final resolution.

Again, the promise of the new law is nothing short of revolutionary. By moving away from the so-called opposition procedures used in Europe since the 1970s, where the European Patent Office typically takes five times ' even 10 times ' as long to resolve a “patent opposition” as the new U.S. law will permit, the new U.S. post-grant regime, if effectively implemented, may well earn the status of international gold standard for defining the mechanisms for public participation in the patenting process.

Toward Global Patent Cooperation, Harmonization

The America Invents Act ' the world's first truly 21st-century patent law ' contains all the elements needed for a patent system to operate effectively, efficiently, economically and equitably. If the decade ahead yields greater international patent cooperation and harmonization among patent systems around the world, then the starting point for that effort should lie in the incorporation of its provisions into patent laws around the globe.

Should that promise be realized, then the AIA will have realized its full potential as the most significant patent act since 1790, not only for the United States, but also for inventors and creators everywhere, as well as those who invest in the creation of new inventions, those who are employed producing and selling them, and, of course, for people who are then able to benefit from these new inventions as consumers.