Will the New Patent Process Bring Hard Days for Inventors?

March 19, 2013 – In The News
New Jersey Law Journal

The America Invents Act (H.R. 1249) changes the U.S. patent application process from a "first-to-invent" system to a "first-inventor-to-file" system after March 16. The act redefines the boundaries of prior art for patent applications and applies a post-grant review process, which took effect in September for business method patents, to all patent applications after Saturday.

Since the bill was signed into law, concerns about its impact have surfaced among patent attorneys and in-house counsel, as well as those that do the actual inventing. Will the act speed up the patent review process and reduce the backlog of applications pending at the U.S. Patent and Trademark Office? Will the new law bring U.S. patent law in line with the rest of the world? Or are hard days ahead for innovators? A sampling of news and analyses of the act and its progress by ALM reporters and contributors should help sketch out the landscape that lies ahead.

An article by Lisa Shuchman in Corporate Counsel had intellectual property attorneys warning clients to "Beware the Ides of March" and avoid last-day filings as lawyers and clients race to the Patent Office to file under the old order. Gina Passarella polled IP attorneys for The Legal Intelligencer about worries of a potential surge on the servers supporting the PTO's website on March 15, as patentees rush to get their applications in under the wire just days before the change.

For Mitchell S. Bigel, partner, Myers Bigel Sibley & Sajovec, the transition from first-to-invent to first-to-file should be less of a worry than how the new act treats prior art, expanding geographically and temporally what is included as state of the art for a patent. Paul F. Prestia, senior counselor and strategic adviser at RatnerPrestia, analyzes the addition of the phrase "or otherwise available to the public" to the definition of prior art and how it will affect information on an invention disclosed privately.

Miriam K. DeChant, director at the Philadelphia Volunteer Lawyers for the Arts, writes in TLI that while first-to-file may bring advantages to enterprise to streamline the patent process, those benefits are not shared by grassroots innovators and may have a chilling effect on proverbial "basement" or "garage" inventors. She details how pro bono programs under the USPTO and the Federal Circuit Bar Association and organizations such as the PVLA can work to shift the balance to aid "under-resourced" individual creators and startups. Pro bono patent programs have been established in California (The Recorder reports), Minnesota, and Colorado (The National Law Journal) in response to an AIA mandate that calls for the PTO to "work with and support intellectual property law associations" to set up regional centers for inventors and entrepreneurs.

Joshua Sisco, reporting for The Recorder, finds opinions on the impact of the shift to first-to-file divided along industry lines, with software and information technology companies feeling the push, while those in the life sciences anticipate business as usual.

Anticipating that the new norm under first-to-file will be to file early and file often, Fox Rothschild's J. Jimmy Hao and Gerard P. Norton see an old trap lurking in the written description requirement, which demonstrates possession of a claimed invention.

Dorothy R. Auth, a litigation partner at Cadwalader Wickersham & Taft, details how post-grant review of a patent's validity creates a "viable alternative" to costly battles in the U.S. district court system that tend to hinder rather than encourage the implementation of new technologies.

Reprinted with permission from the March 19 issue of The New Jersey Law Journal. © 2013 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.

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