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This series of blog posts seeks to set the record straight on the goal of getting Utility Patents to publish with SCA (Sustainable Competitive Advantage).

In our definition, a patent that publishes with a CLEAN FILE-WRAPPER (no FATAL flaw do-over's) and with CLAIMS that broadly scope the PREFERRED-EMBODIMENT (P-E), will turn out to be patents with SCA.

Why? First, their chain of ownership will be identified with a published patent that has the right look and feel. Second, when ANYONE looks at the File Wrapper ( a public document from the Patent Office), they won't surface any chinks in the armor out of the "starting block". Thirdly, when they look at the object of their invention and what THEY want to go to market with, it will READ on the primary claims in the published patent ( and give them a moment of pause), and in this pause THEY WILL RECONSIDER whether to attempt to file a post publication action in an attempt to invalidate your patent.

Good enough. The simple IP model for...

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...

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....

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...