Getting up to speed on the post-AIA world

This year's AIPLA Annual Meeting morning panel on patent prosecution do’s and don’ts will discuss the biggest issues in what is likely just the first step in reform of the US patent system

Moderator Brian Stanton of Stanton Consulting Services says that the panel will cover a wide range of topics, including the history of the AIA, the harmonization efforts linked to the Act, the “broad versus narrow” debate related to the grace period, the inventor-versus-applicant distinction and post-grant proceedings. The panel will end with a “lightning round” with the speakers giving practical tips for practitioners.

The change from a first-to-invent to a first-to-file system is a big step toward harmonizing American patent practice with the rest of the world, but this development has been a challenge for practitioners. The one-year grace period for disclosures made by the inventor is a remnant of the pre-AIA first-to-invent system. However, Stanton says that there is some debate about how this grace period should be interpreted.

“The PTO has interpreted the grace period very narrowly, and has basically said that the prior art has to be exactly what the inventor is filing for,” he says. As he explains, let’s assume an inventor makes a pre-filing disclosure within the grace period for a blue car, but the application that she eventually files claims all cars. Under the USPTO’s narrow reading, the application may only be novel and nonobvious as to blue cars because the previous disclosure only falls into the grace period as it pertains to blue cars. Patent protection as to all other colors may thus not be available.

Stanton says that this interpretation may not be consistent with Congressional intent. “If you look at statements made on the Senate floor by Senator Leahy and others, there was clear indication that this grace period was meant to be interpreted broadly,” he notes.

Another one of the subtle but important AIA-instituted changes that the panel will discuss is the shift to allow assignees who have a proprietary interest to be the patent applicant, whereas previously the AIA the applicant had to be the inventor. This change brought US practice in line with much of the rest of the world. Stanton and the rest of the panel will talk about the practical effects of this change. For example, employment policies and contracts governing the employer-employee relationship have to reflect these changes to ensure that employee inventions belong to the company.

Stanton says that there are also broader concerns and uncertainties about this change. First, he notes that the issue of who is an inventor is addressed in Section 100 at the very beginning of the Patent Act, so the effect of this change permeates the entire statute and may have an effect on every provision. Similarly, he says that some may even still debate whether the change to allow assignees to file patent applications is consistent with the Constitution, which authorizes the executive branch to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” (emphasis added).

The sheer number of AIA-related changes has meant that practitioners have had to familiarize themselves with many new concepts. Stanton says that this has resulted a whole new lexicon for practitioners talking about these changes. Some of these terms include: A1 and A2 prior art, used to describe prior art as defined in either Section 102(a)(1) or 102 (a)(2) respectively; inventor originated prior art; and third-party initiated proceedings, used in the context of re-examinations.

Stanton and his fellow panellists have compiled a glossary of about 400 such new terms related to the AIA.

“These terms hopefully will help patent professionals talk to each other and will become conventions that are useful for having these conversations about the patent practice,” he says.

Stanton says that the number of open questions and the transitional nature of some of the AIA-related provisions suggest that there are more changes coming. He notes that fellow panellist Alan Kasper of Sughrue Mion will discuss how the AIA may be just one step toward more changes to come in the near future.

“The AIA was driven in part by the move to harmonize the patent law with the global system, and the grace period that we have was the result of a bit of pushback. As we move forward, there will be more discussions about these international issues, and it remains to be seen whether the rest of the world will move more toward the US, or if the US will move toward more of an absolute novelty system,” Stanton explains. “This push and pull demonstrates that the AIA may be almost an intermediate law and that probably in the next decade or so we are going to see more movement.”

In the meanwhile Stanton says some issues like the grace period will likely be litigated.