The America Invents Act: The End of the Lottery?

Posted on 09-10-2012 by
Tags: Real Law

Brought to you by the Real Law Editorial Team

Two of the dirtiest words in business are usually associated with patents: “unpredictable” and “expensive.” Now that the America Invents Act (AIA) is being implemented, three surprising new words will be used to describe the patent application process: “fast,” “transparent,” and “interesting.”

In the past, some have compared IP litigation to the lottery, where you never know if you are holding a winning ticket. Even worse, you can win but have to pay so much defending your patent in court that it feels like losing. That’s something that causes anxiety in any attorney.

Luckily, there seems to be some good news on the horizon. Enter the AIA, a sweeping and significant set of new laws that will change a lot about how patent applications are created and processed. Still, “good” rarely means easier: going forward, patent drafters will be under more pressure than ever to be fast, thorough, and informed.

The Tricky Race to the Patent Office

The AIA’s move from a first-to-invent to a first-to-file system has received a lot of publicity. It goes a long way to harmonize the U.S. patent system with international norms. It does mean no more built-in grace period between inventing and filing, with only a few exceptions.

Over time, there will evolve a common understanding about the reasonable amount of time for how quickly applications can get through the door of the United States Patent and Trademark Office (USPTO). It might need to be hashed out in a few courts, and there may be some malpractice suits filed against firms that don’t work quickly enough. While this may create additional pressure to file early, attorneys have tools available that can help them deliver that needed efficiency. The real change is going to be in the new levels of transparency and scrutiny in the process.

Early Bites at the Apple and Last Kicks at the Can

The quality of patent applications has always been of paramount importance. A good application will usually give you a good patent. A poorly drafted application, if it’s accepted, will lead to a less valuable, less defensible patent. But once the AIA is fully in effect, the USPTO’s “Patents End to End” Strategy means there will be multiple separate proceedings through which patents or even recent grants can be reviewed, amended, or—if they’re weak enough—shot down.

Starting September 16, 2012, any third party can provide the USPTO with prior art during pendency of a patent. That is a game-changer, meaning that someone can knock out or limit the scope of any subsequently issued patent. This is good news for companies that may be affected by pending patents.

This heightened scrutiny will be a feature of the process, from pre-submission to post-grant review. Attorneys will want to conduct thorough preliminary searches of the prior art to pre-empt challenges, find threads for expansion, and draft stronger claims that will survive the gauntlet.

The USPTO continues to hire more examiners, and is developing tools like the Patent Application Text Initiative, which offers algorithm-based analytics for identifying a variety of issues, including lack of support in the disclosure and claim anomalies. Structural checks and analysis will make it easier to develop Section 112 rejections. USPTO examiners will be able to catch things sooner and more often.

Increased transparency in the process means that the examiner isn’t the only one who will be watching: your competitors will be too, particularly in post-grant review. If they see something that looks problematic, they’re going to jump on it. With third-party involvement, the pool of people looking will be that much bigger.

Staying on Your Toes

The work will be ongoing. Attorneys will be monitoring published applications more closely, and considering whether they want to identify and submit prior art to challenge public applications. There will be more prior art searching, looking closely at applications and deciding what to do.

Patent application quality is going to be more important. You need to do better searching for prior art for pre-issuance submissions to avoid embarrassment. If your applications are regularly getting knocked out, you are going to have unhappy clients, because they’ll want to know how their money is being spent.

If you don’t have efficient and clear processes, you are going to be in trouble. Quality applications and better tools will definitely be part of every attorney’s future.

So be fast, thorough, and responsive. Everyone will be watching.

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