John Lane on AIA – Part 1

Background to the America Invents Act

Much has been said and written about the ‘America Invents Act’ or AIA, which has introduced the most profound and sweeping changes to the patent laws of the United States of America, since the modern-day patent statute was codified in 1952, through Title 35 of the United States Code (USC). Many of the substantive features of the AIA have been introduced to address the long-running criticism of the US patent system as unwieldy and out of tune with the rest of the world as IP law and practice grows increasingly international in scope; and as it has become important to provide attractive lower-cost options and procedures for challenging patents in lieu of very expensive US federal court litigation. As such and for European practitioners and clients involved in procuring and enforcing patent rights in the US, the AIA should come as a welcome change and positive development.

The AIA in comparison to European practice

On the whole, the new AIA statutory provisions and amendments to Title 35 bring US patent law and practice significantly more in sync with the substantive concepts presented in the European Patent Convention (EPO) and in EPO practice and procedure. The most significant and important change introduced by the AIA lies in the conversion of US patent law from a ‘first to invent to a ‘first inventor to file’ statutory regime. As such the AIA also serves to eliminate the interference proceeding, peculiar to US practice and vastly improves post-grant procedures for challenging the patentability (validity) of granted patent claims by:

• introducing a new ‘Post Grant Review’ (PGR) proceeding that is akin to the EPO Opposition proceeding, and
• revamping prior US reexamination procedure, by recasting a new ‘Inter Partes Review’ (IPR) proceeding to replace the former inter partes reexamination, which has experienced only limited use and received mixed reviews from the practicing bar and clients

The former inter partes reexamination, was criticized for progressing slowly and formalistically with grounds limited to novelty and obviousness (inventive step) based on prior art patents or printed publications.

PGR and IPR

Both the new PGR and IPR proceedings offer more litigation-style procedures including some discovery (known as disclosure in the UK). The PGR presents a third party with a broad basis for challenging the claims of a granted ‘first inventor to file’ patent (an application filed on or after 16 March 2013), based on novelty, obviousness or any other specification-related challenge through any form of credible evidence, and must be filed within nine months of the grant of the patent. The IPR challenge, which is available nine months after grant (alternatively after the conclusion of a pending PGR) or by a party sued for infringement, within one year of the date that the infringement claim is filed against that party, is limited to novelty and obviousness challenges based on prior patents and printed publications but is expected to proceed more efficiently than the former re-exam proceeding.

‘First to file’ or ‘First inventor to file’ principle, and prior art

The origins of the most significant AIA provisions, which came into effect on 16 March 2013, can be traced as far back as the General Agreement on Tariffs and Trade/The Agreement on Trade-Related Aspects of Intellectual Property Rights (GATT/TRIPs negotiations of the early 1990s and have been percolating before US Congress for several years through multiple bills introduced as far back as 2005. The primary effect of the new ‘First Inventor to File’ (FIF) statutory system is to significantly expand the pool of potentially patent defeating prior art, by qualifying any form of art preceding the earliest filing, or priority, date of a given US patent application,

including evidence of prior patented subject matter, printed publications, public uses, and sales. The system also eases the burden of establishing priority as only filing dates and publication dates, rather than ‘invention’ dates (conception and reduction to practice), may be used in assessing the novelty and obviousness (inventive step) of a given patent application.

John Lane specializes in complex intellectual property litigation and his practice is focused both in the U.S. and on an international scale.