After six years of starts and stops and extensive debate, Congress enacted the Leahy-Smith America Invents Act (“AIA”) on September 16, 2011. The final Senate vote was an impressive 89 to 9 vote in favor of passage. The Act represents the most dramatic changes to U.S. patent law since 1952, including fundamental changes to the law governing the right to obtain patents and the ability to challenge patent rights. As an introduction to the new law, we offer the following answer to the question "Why do I need to know about the AIA?":
- High tech companies need to know of the omission of the grace period for sales and sales offers, the increased importance of promptly filed provisional applications, and the changed role of appropriately timed public disclosures.
- Companies that have a policy of avoiding publication of patentable ideas will benefit from knowing of the new benefits of publication. Publication can now immunize an inventor/owner, for one year, against subsequent disclosures by others that would otherwise undermine patentability.
- High tech companies will benefit from knowing how to maximize protection for their technology by implementing strategies that take advantage of the new interplay between public disclosures, provisional applications, and utility patent applications.
- Companies need to know how U.S. strategies under the new law relate to foreign patenting strategies, including the continuing foreign patent-defeating effect of public disclosures.
- High tech companies accustomed to keeping inventor notebooks for possible inventorship contests will benefit from knowing that the new law may reduce the importance of notebooks.
- The law changes the balance between patents and trade secrets, and high tech companies can benefit by knowing of the increased potential for compatibility between patents and trade secrets for different aspects of the same technological advance.
- Companies will benefit from knowing that a company can now successfully defend against patent infringement for any method or process, or related equipment or materials, when the company has the method, process, equipment, or materials more than one year before the patent owner publicly disclosed the method or process, or filed its patent application.
- Companies with some understanding of the pre-AIA criteria for assessing prior art must know how those criteria are drastically changed under the new law. Without re-education, potentially costly misconceptions may linger on.
- Companies who have some knowledge of the new patent law features need to know of the timetable for implementing the features and the complex transition regime.
- High tech companies that shied away from patent litigation in the past, because of cost and delays, will benefit from knowing of the new and less expensive ways to resolve disputes before the U.S. Patent and Trademark Office.
- Companies that have been disadvantaged by another competitors' patented technology might benefit from the new post-grant review proceeding for challenging future patents on any ground, with a burden of proof that is lower than that in a federal district court.
- Companies with high-tech competitors will want to understand the new regime for challenging patents within nine months of issuance. Implementation of docketing protocols and review procedures may be appropriate, including routine, automatic searches for competitors' issued patents.
- Companies that have patentable technology will benefit by knowing of the new options for expediting examination.
- Companies that sell patented products and use patented methods and equipment may benefit from knowing about the dramatic changes in false marking law, and how they might more aggressively mark their products to maximize potential patent damages they may receive.