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Impact of America Invents Act   

When the RABBIT can win the race.

An inventor’s point of view: Schwartz unwinds and simplifies the understanding of AIA and what to do about it.

David C. Schwartz VP Intellectual Property, Eservgo/ Author IP-BC 

FIRST, let's look at the key Dates when AIA provisions were enforced: 

Sept 16,2011  

Leahy-Smith America Invents Act (AIA)/Patent Reform Act of 2011 

Sept 16, 2012 

Inter Partes Review(IPR) replaces Inter Partes Re-examination(PRE) 

Post Grant Review (PGR) go into effect for patents filed after March 16, 2013 

March 16, 2013 

First-To-File (F-T-T) goes into effect

 What/Why AIA:

Ostensibly, the purpose of AIA was to modernize America’s patent laws, and mostly harmonize US patent law with the rest of the world. Specifically, it orders the shift from our long standing First-To-Inent  (F-T-I) system to an F-T-F system...

Sustainable Competitive Advantage is an illusive goal for published patents. Will they be "great enough" to stand up to the test of market application (the right or license to make, use or sell). For SCA, Fatal Office Action Rejections (FOARs) must be anticipated and avoided before the patent application is filed. FOARs cause patents to be abandoned, or weaken them substantially by exposing patent flaws in the File Wrapper which publishes with your patent when it's granted.

The nature of the rules R101,102,103,111,112,& 113 are covered in the IP-BC Starter-Kit and an approach to drafting airtight patents with SCA based on using The Schwartz Method (TSM) is explored.

Understand this and accelerate down the IP corridor of uncertainty.

May the Schwartz be with you.

Why does the current lawsuit by Intel, Apple Cisco and Google to enable the use of IPR during a pre-trial licensing hearing, or during the trial itself put even greater pressure on potential patent holders and licensors?

Look, "TROLLS" are frowned on as caustically as blackmailers...agents that aggregate patents with published claims which are allegedly being practiced by companies with "deep pockets" for royalty fees...while not making anything themselves. They are seen as an undesirable impediment to commercialization of worthwhile innovation.

By way of background, IPR was structured to allow "forced licensees" of questionably issued patents to ask for a panel review AFTER a patent was published. The question of validity BEFORE a patent published, used to only be possible as an "interference", petitioned for externally or initiated internally. Other much more expensive procedures were available to opposers of published patents, but they were much more difficult to mount....

If we can agree that emerging from the Flash Of Genius (i.e. emerging from the FOG) is a wonderful moment to experience, it is equally fraught with the  intrepid sense of hurdles ahead in establishing Intellectual Property Rights.

Having the 20-20 hindsight , the opportunity to view that moment in the FOG from the mountain top of success, to see a path to achieving a sustainable IP value proposition, could  prove to be the catalyst for all of the players in the IP hunt.

Establishing an IP position may be the furthest thought in the mind of the seminal creator. On the other hand, it might be the first thought, as in "who do I need to involve now to ensure our rights to develop and commercialize this are engaged"...or anywhere in between.

The issue is well cast in the contrast between the FOGGY act of creating the innovative and patentable "thing", and the process of establishing intellectual property rights for it. One is intuitive and the...

Why does the current lawsuit by Intel, Apple Cisco and Google to enable the use of IPR during a pre-trial licensing hearing, or during the trial itself make the case even greater for getting utility patents with SCA?

First, consider the defendant and plaintiffs goals. The USPTO as defendant has a rule under AIA that allows IPR's to be invoked after a patent is published. The purpose of this was to assist an overloaded patent office in weeding out invalid patents, augmenting the prior means for this which was called an interference proceeding. In principle, the idea of an IPR was painful to patent holders, independent inventors, and licensors in so far as their right to what might have otherwise been a claim in a published patent could be terminated by forces outside of the patent office after publishing...tantamount to having the "rug pulled out from under them". 

The USPTO did propose a refinement on IPR's that would prevent them from being used if a case was going...

Wrong :) You know that they still matter since your invention notebook is your iterative innovation tool. Yes, at one time, when we were First-To-Invent (FTI),  it's role documenting your initial conception, played a more critical role in establishing patent priority and monopoly rights. Even with the new AIA First-To-File (FTF), date of conception can still play a role in certain circumstances, especially during infringement battles that might result in an injunction or the payment of forced royalties. But that's not my point here. The importance of Schwartz's Big-Bang-Theory of IP Capitalization and the factoring of The Schwartz Method (TSM) into Product Lifecycle Management (PLM) has a more fundamental role.

Achieving FTF on a true Preferred-Embodiment (P-E) is a matter of integrating patent preparation into every nook and cranny of the product development road map. The days when the luxury of filing unfocused provisionals and drafting the patent on the P-E as an...

Right off, when you create a "Picket Fence" you can expand your monopoly. OK, sure that's the ticket. Getting the picket fence, well that's where the misconceptions can creep in.

If you think you can do it in one master stroke, with a bible patent that covers all the Preferred Embodiments of your invention, it may prove to be a walk into the tulip patches.

First, if your application has MORE THAN ONE INVENTION in it, and your preferred embodiment passes all the rules for allowance, then at the time of publishing, they are going to MAKE you pick an invention. A patent can only cover one invention. So if the set of P-E's can be seen as different inventions (per your CLAIM sets), then you will have to divide at the time of publishing in order to keep "the others".

If you go this route, then the "20 year" time clock starts clicking on all the embodiments, and they will all be shown as well. Further, if there is any reason that the first patent "falls", the risk of the rest falling is...

BBT shares a set of events that lock-step toward the blessed Notice of Allowance for a patent on one of your chosen inventions. It is the primary theme of IP-BC and is used to establish all the course lessons and tools you can put to best practice use.

The sequence of events you will engage in to file an airtight patent application, de-risked from FOARs will take a natural course IF YOU STAY FOCUSED on identifying and prototyping the P-E, along with drafting layman claims for the object of enablement that quiesces to BEST MODE with the minimum number of "elements".

So while that's going on in R&D and Product Marketing, on the other side of T=0 (MARKET ENTRY), Business Development/Sales is making moves to establish the commercial value of what you have been in the process of protecting.

MISCONCEPTION: we must wait till the patent issues before selling it in the marketplace. 

In this first-to-file world, and with the acceleration of innovation, the iterative nature of...