Impact of AIA: First-To-File (FTF)
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.
This BLOG Post: It’s important to understand the nuances of AIA and the transitional components it implements, but it's not my only purpose here. This blog category will share the framework and impacts of AIA from an inventor point of view. In this short summary of impacts, I want to focus on what the world looks like “now”…the filing considerations if you draft and file today. To do this, I’m going to slow-jam the rule changes so that the implications going forward are clearly understood by IP hunters.
The overall "shape of AIA":
A simplifying point of view that helps understand the elements of the law is that it was designed to enable the shift to F-T-F without “breaking” our patent system. Think of this as the ACT administering a pain killer to IP hunters until the healing process of turning the pyramid upside down can "do it’s thing". Some of the pain killers were needed to allow the going concerns to complete IP workflows already in play. Others were instituted to prevent complete trauma to the “victims”, especially independent inventors. Appeasement of first-to-invent players took some real creativity on behalf of the PTO.
WHAT THEY DID
In order to “seamlessly” harmonize, there were some transitional steps taken to help preserve patent prosecutions that were already on-going. For example a change was made from interference proceedings to derivation proceedings, allowing for the separation of filing dates by parallel prosecutions. Other transitional elements were introduced to ease into the 180-degree change (what I call “the pyramid upside down”). For example, the fundamental principles of the 1(one)-year rule was reaffirmed. However Foreign Use PRIOR to filing within 1 year was established as a prior art bar to getting a patent in the US (read that “harmonization”).
What method would be the weapon of choice to end the fundamental and guiding right of free enterprise embodied in first-to-file? Here the ACT needed to get creative. A key and VERY IMPORTANT aspect of the rule changes made allowed use of TRADE SECRET RIGHTS as the basis for a “Prior User Defense (PUD)”. PUD was made applicable to all inventions, not just business method patents. In other words, if you could prove that you were practicing a product (one that reads on an issued patent filed after your secret use), you could then assert this as a way to avoid or traverse an injunction for infringement by the later filer.
As a recognition of the "the good old days" of F-T-I, you cannot be sued for damages if you do establish a PUD that occurred at least 1-year BEFORE the current patent filers claims, and the argument(s) must be “CLEAR AND CONVINCING”. Nonetheless, you can no longer get a patent on those rights by establishing a pre-dated chain of invention. If the rights have already accrued to the one that beat you to the patent office, they're gone baby gone.
Sept 16, 2012 was a critical date.
Two very important changes went into effect (a) & (b):
a. Inter Partes Review offer opposers "Plan A"
"Ex Parte Reexamination" procedures remained mainly unchanged, however, Inter Partes Reexamination proceedings were replaced by a new type of proceeding called “Inter Partes Review”. This affords opposers of your patent claims (if you allowed your patent application full specification and claims to be published for others to see) the opportunity to traverse your claims PRIOR to any examination on merit or allowances by a PTO Examiner. During this time, opposers can file flaws about your application which become part of your File-Wrapper, before examination or publishing. This enables opposers a new procedure that saves the patent office work (an accelerant to examine and dismiss or interfere) providing a trigger for an internal validity analysis "with teeth from a competitor". This allows others to take a bite out of your apple BEFORE the Examiner even found a reason to do it on their own. The law is designed to permit the burden of validity to be challenged by more parties (read that your competitors), other than a sole Examiner in an office with no windows.
Yes, in this method, the case that must be made for opposition has been upped to “likelihood of success” against at least one claim, instead of “raising new questions”, but it’s harsh and establishes the right of a third party to mess up your File-Wrapper, BEFORE or "if even", the Examiner might have found something substinative on their own.
The IPR is in effect a BOUNTY HUNTER law, letting literally anyone (read that, among others, TROLLS) to hunt, accost, and cast doubt or even take down your patent before examination on merit by the PTO…they can now preempt the Examiner by take
ing a part of prosecution law into their own hands (for a small price). Their motivation? Surely it's not to save the patent office money, even though it does...they get to pay the PTO to do the Examiner's work . . . What it really does is allow THEM to avoid costly down stream litigation and nip your innovation in the bud for "pennies on the dollar".
b. Post Grant Reviews (PGR) offer opposers a "Plan B".
This is another BOUNTY HUNTER provision. If they missed the opportunity to get you in (a), then they can still get you in (b)…they have a 1-2 punch to knock you out of the ring before you even get to practice your invention. If they did not preempt you with (a) whether intentionally or unintentionally, "missing on taking that shot", they have PGR to fall back on. With PGR, a granted patent can be challenged yet again. Under PGR, a person who is not the patent owner may petition the USPTO to review the validity of an issued patent within nine months of its grant or issuance of a reissue patent. Assertions of invalidity may be made on any grounds of patentability that one can raise as a defense in patent infringement litigation before the courts, including failure of the claims to define subject matter eligible for patenting, lack of novelty, obviousness and to provide a written description or enablement. …and, a petitioner initiating a PGR proceeding need bear the burden of proposing (i.e. trying the case in proving) invalidity by just the lower standard of “by a preponderance of the evidence”, in contrast to the higher “clear and convincing” evidentiary standard.
SO WHAT?
From an inventor point of view there is only one conclusion to be drawn from the 1-2 punch out. If the above explanation seems a little overwhelming, no worries, trust me . . . it is. In (a) they can trigger an interference hearing to stop you cold if it succeeds. In (b) they can invalidate your patent by force of identifying FATAL Office Action Rejection flaws as if they were the Examiner. If they're smart, and you haven't done your homework well enough, you will suffer the consequences and it will hurt.
The conclusion may seem pejorative but I'm going to tell-it-like it is and encourage you to learn The Schwartz Method so that you do not fall victim to the rule changes of AIA. There is and always will be only one Manual for Patent Examination Procedures, and AIA does leaves it fundamentally UNCHANGED, i.e. the way the rules of what a great patent is were applied BAIA and now AIA are essentially the same. All patents are subjected to R101,102,103,111,112,113 criterial for allowance EQUALLY.
If you filed an airtight patent BAIA, or after AIA it will have Sustainable Competitive Advantage and will withstand (a) and (b) oppositions. If you didn't, you're going to be hurt.
But with AIA, you really do have to get to the patent office first if you want to maximize the asset value of your claimed patent(s). One critical sequence of events you will need to hone and optimize is how to prototype and "fail fast". In other words, you can and should keep your inventive matter like the "formula for coca-cola", trade secret(s), as ong as is reasonably possible. During this intense interval, you should be using TSM to incrementally draft airtight patent applications that embody, enable, and unambiguously specify and CLAIM the true invention. When you quiesse that workflow, then you must get that application on file “fast” and first, to enable the examination on merits. Complement this by using TSM to articulate the prior art(Section B of TSM) and give the patent Examiner a robust Information Disclosure Statement(IDS) that allows you to clearly, cleverly, and unequivocally define over any prior art, taken alone or taken in combination, doing the Examiner's work for him and helping yourself to stay clear of the BOUNTY HUNTERS.
There are ways to do this, and in the interest of making the outcome a fair and reasonable one, IP-BC (Intellectual Property BoostCamp) has introduced The Schwartz Method (TSM) into the fray as a way to enable any IP hunter to avoid falling prey to a flawed filing event, or the BOUNTY HUNTERS waiting in the wings. Use TSM to secure airtight patents that have Sustainable Competitive Advantage (SCA). SCA patents issue with clean file wrappers, they have claims on the preferred embodiment, cover the objects of invention introduced in real products on the market, will be infringed by anyone practicing the invention, can be licensed non-exclusively if the monopoly holder chooses, or can be made used and sold without dilution by interlopers. May the Schwartz be with you.
