Week 12 - Post #3

One of the key issues that Efrat explained to us in her lecture was surrounding the "America Invents Act." I wanted to delve deeper into this topic and see how it has truly impacted the patent world, when it was put into play around mid-2013.

The key changes are as follows:

1. Change from "first to invent" --> "first to file" 
1. This directly aligns the United States with the rest of the world on this issue
2. Establishment of the PTAB (Patent trial and appeals board) - this allows for a post-granting review process by a patent legal entity that can judge the merits of grants that are uncertain or that come into question.
3. Joinder of parties: this legally prohibits plaintiffs from being able to sue multiple defendants
4. The AIA allows accelerated examination merely by paying a surcharge
5. The AIA continues the trend of moving validity issues out of the federal courts and into the USPTO by allowing a 9-month post-grant public opposition period for applications filed after Sept. 16, 2012, or March 16, 2013 for some applications.
6. The AIA allows owners to file applications directly.
7. The AIA allows commonly owned patents and applications to not be prior art against each other.
8. The AIA strengthens patent validity by stating that “failure to disclose the best mode” and “failure to have correct inventorship” may not be used to invalidate a patent.
9. The AIA allows third parties to submit prior art against pending applications if submitted within 6 months after publication or before the first Examination Report.
10. The AIA allows patent owners more ways to correct patents after grant. Expands post-grant patent reexamination for consideration of prior art to now include a second proceeding called supplemental examination which would allow the USPTO to consider any information that raises a substantial new question of validity.
11. The AIA provides a prior user defense against a charge of infringement for an infringer in all lawsuits after Sept. 16, 2011 who can show commercial use more than a year before the filing date.
12. The AIA provides inventors with a 75% discount on USPTO fees if they have no more than 4 patents and a gross income less than 3 times median household income.

I want to delve into the Pro/Cons of the act:

Pro:

1. Aligns the United States with the patent filing process of other countries
2. Could speed up patent review and decrease the huge backlog that exists today
3. Cut down "general costs" that will make this option more affordable to all citizens to file

Con:

1. Although costs are cut, the majority of the fees still left in the patent process associated are with lawyers - a fee that favors corporations that can employ an army of lawyers and legal consultants
2. The trend on filing "first" can be a huge push against the "small inventor" to create this urgency to go through the process when products and other spin-off ideas may not be fully developed
3. Under the AIA, patent related fees will increase 15%.
4. Under the AIA, a $400 surcharge will be added for documents not filed electronically.
5. The AIA establishes a specific post-grant review program for business method patents involving financial products so the USPTO can determine if these “bank patents” are legitimate.
6. After enactment of the AIA, clients can expect legal fees will increase due to added difficulty to provide legal advice under two legal regimes.