ILNews

New provisions shine light on patent process

Back to TopCommentsE-mailPrintBookmark and Share

Quietly on Sept. 16, more provisions of the Leahy-Smith America Invents Act took effect, opening the patent granting process that has operated in the dark for much of the past 176 years.

Now competitors, inventors and other third parties will be able to challenge the validity of a patent application through a pre-issuance procedure and challenge a standing patent through the post-grant review process.

These changes are why, in part, Mark Janis, director of the Center for Intellectual Property Research at the Indiana University Maurer School of Law, describes the new patent law as the most significant reform of the U.S. patent system since the 1836 Act which established the patent office and an application examination process.
 

patent-15col.jpg Mark Janis, director, Center for Intellectual Property Research; David Kappos, director, USPTO; Robert Armitage, senior V.P. and general counsel, Eli Lilly & Co; and Maurer School of Law Interim Dean Hannah L. Buxbaum attended the “America Invents Act: One Year Later” conference Sept. 14. (Photo submitted)

The AIA was signed into law in September 2011 after a six-year process that brought opposing groups together to collaborate on rewriting what some saw as a broken patent system.

Provisions in the AIA are being rolled out gradually over the course of a couple of years. The elements that became effective in 2012 include the challenge procedures and the inventor’s oath. Next March will bring the biggest shift as the U.S. patent system switches from a first-to-invent system to a first-to-file system.

Transparency and objectivity

To mark the first anniversary of the new patent law, the Center for Intellectual Property Research held a one-day symposium on Sept. 14 to discuss particular provisions in the new law and try to assess what the AIA accomplished and what it omitted.

Keynote speaker Robert Armitage, senior vice president and general counsel at Eli Lilly and Co., called the AIA a “giant step forward.” He is credited with being a driving force behind the bill’s passage and with keeping the Silicon Valley companies and the pharmaceutical and biotech companies at the negotiating table during the legislative process.

In a 2012 article for the American Intellectual Property Law Association Quarterly Journal, Armitage summarized how the new law will change the patent system.

“Through a 130-page bill over the six-year legislative process, Congress transformed the U.S. patent system from one of non-transparency, subjectivity, unpredictability, and excessive complexity, to one that will operate with near-complete transparency, objectiveness, predictability and simplicity in the principles that govern patentability and patent validity,” he wrote.

Speaking before the patent conference, Armitage acknowledged the AIA as passed by Congress contains errors that need to be corrected. Conference panelists highlighted the lack of caps on damages, no research exemption and the growing bureaucracy of the patent office as areas of concern.

However, Armitage advised the audience of legal scholars, U.S. Patent and Trademark Office representatives and practicing attorneys to “think more broadly” beyond their own interests as they tackle these errors.

A lot of compromise went into crafting the bill, he said, and it would be a shame if that spirit of cooperation was not continued in the work to correct the new law.

Challenge process

Until 1999, when the patent office began publishing many patent applications 18 months after they were filed, the granting process was conducted out of the public eye. In fact, the only notification that an inventor was applying for a patent often came on the day the exclusive rights were actually issued.patent-fbox.gif
Through the AIA provisions for pre-issuance procedure and post-grant review that took effect Sept. 16, the public’s ability to contribute to the examination process will be enhanced, Janis said.

In the pre-issuance process, challengers have a limited window to submit prior art or documents of other patents and inventions and offer explanations that raise questions about whether the patent application should be granted.

“I think most people are hopeful it’s going to provide a mechanism to increase the quality of patents issued by the U.S. patent office,” said Joshua Larsen, registered patent attorney and an associate in the intellectual property department at Barnes & Thornburg LLP. He explained the pre-issuance procedure is viewed as likely to decrease the frequency of invalid patents being granted.

Although he expects many will utilize the pre-issuance process, he expects others to hold back from challenging the application because the procedure is not as robust at litigation. The challenger can argue against the validity of the patent application but cannot respond once the applicant has answered the charges. A court proceeding, Larsen said, would provide the opportunity to get the last word.

The success of the pre-issuance procedure rests on how the patent office implements the provision, Janis said. There are concerns that large, well-funded companies could flood the patent office with a huge number of prior art and explanations that would essentially tie up the entire patent system for a small upstart company.

Anticipating this possible pitfall, Janis noted the patent office has been careful about not obligating itself to considering all documents and materials submitted.

The post-grant review process will provide an alternative to litigation in challenging patents that have already been approved. Competitors can file a petition with the patent office, and the government agency has up to 18 months to consider it before issuing a ruling. Afterwards, the losing party can appeal straight to the federal circuit. Larsen expects the post-grant review process to have credibility, in part, because any appeal after the process will likely not be able to raise arguments that were not presented to the patent office.

Armitage touts this provision as potentially saving time and money. In particular, he pointed to Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1341 (Fed. Cir. 2010), which took nearly a decade and included a couple of summary judgments and one loss at a jury trial.

The post-grant review, he said, could resolve cases like Ariad in months rather than years and reduce costs from millions of dollars to thousands.

First to file

Perhaps one of the more controversial parts of the bill, the first-to-file provision does not become effective until March 2013. This will bring a fundamental shift in the U.S. patent system where the priority is based on the first inventor to file for a patent rather than the first to invent the product.

Detractors say the first-to-invent system is more just and the first-to-file process makes inventors more vulnerable to having their ideas stolen. Janis noted the situation is less dramatic than the rhetoric would indicate. Already, the U.S. system is a mix of first to invent and first to file with many large corporations operating in a first-to-file mode.

The central argument for the provision is that it will help the domestic patent system come closer to being in harmony with other patent systems in foreign countries.

Closer harmonization will reduce costs for companies that operate globally, Larsen said. U.S. patent applications will be more aligned with applications from other countries so companies will not have to spend as much time and resources filing the different applications.

The assessment of whether or not the post-grant review system is beneficial will be done in a relatively short period of time but, Janis said, determining if changing to a first-to-file system was good or bad will take decades. Still, at this point, he sees more potential for a positive impact.

“I would be surprised if anybody can make a plausible argument that we destroyed our patent system because we adopted the evil European system,” Janis said.•
ADVERTISEMENT

Post a comment to this story

COMMENTS POLICY
We reserve the right to remove any post that we feel is obscene, profane, vulgar, racist, sexually explicit, abusive, or hateful.
 
You are legally responsible for what you post and your anonymity is not guaranteed.
 
Posts that insult, defame, threaten, harass or abuse other readers or people mentioned in Indiana Lawyer editorial content are also subject to removal. Please respect the privacy of individuals and refrain from posting personal information.
 
No solicitations, spamming or advertisements are allowed. Readers may post links to other informational websites that are relevant to the topic at hand, but please do not link to objectionable material.
 
We may remove messages that are unrelated to the topic, encourage illegal activity, use all capital letters or are unreadable.
 

Messages that are flagged by readers as objectionable will be reviewed and may or may not be removed. Please do not flag a post simply because you disagree with it.

Sponsored by
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. File under the Sociology of Hoosier Discipline ... “We will be answering the complaint in due course and defending against the commission’s allegations,” said Indianapolis attorney Don Lundberg, who’s representing Hudson in her disciplinary case. FOR THOSE WHO DO NOT KNOW ... Lundberg ran the statist attorney disciplinary machinery in Indy for decades, and is now the "go to guy" for those who can afford him .... the ultimate insider for the well-to-do and/or connected who find themselves in the crosshairs. It would appear that this former prosecutor knows how the game is played in Circle City ... and is sacrificing accordingly. See more on that here ... http://www.theindianalawyer.com/supreme-court-reprimands-attorney-for-falsifying-hours-worked/PARAMS/article/43757 Legal sociologists could have a field day here ... I wonder why such things are never studied? Is a sacrifice to the well connected former regulators a de facto bribe? Such questions, if probed, could bring about a more just world, a more equal playing field, less Stalinist governance. All of the things that our preambles tell us to value could be advanced if only sunshine reached into such dark worlds. As a great jurist once wrote: "Publicity is justly commended as a remedy for social and industrial diseases. Sunlight is said to be the best of disinfectants; electric light the most efficient policeman." Other People's Money—and How Bankers Use It (1914). Ah, but I am certifiable, according to the Indiana authorities, according to the ISC it can be read, for believing such trite things and for advancing such unwanted thoughts. As a great albeit fictional and broken resistance leaders once wrote: "I am the dead." Winston Smith Let us all be dead to the idea of maintaining a patently unjust legal order.

  2. The Department of Education still has over $100 million of ITT Education Services money in the form of $100+ million Letters of Credit. That money was supposed to be used by The DOE to help students. The DOE did nothing to help students. The DOE essentially stole the money from ITT Tech and still has the money. The trustee should be going after the DOE to get the money back for people who are owed that money, including shareholders.

  3. Do you know who the sponsor of the last-minute amendment was?

  4. Law firms of over 50 don't deliver good value, thats what this survey really tells you. Anybody that has seen what they bill for compared to what they deliver knows that already, however.

  5. My husband left me and the kids for 2 years, i did everything humanly possible to get him back i prayed i even fasted nothing worked out. i was so diver-stated, i was left with nothing no money to pay for kids up keep. my life was tearing apart. i head that he was trying to get married to another lady in Italy, i look for urgent help then i found Dr.Mack in the internet by accident, i was skeptical because i don’t really believe he can bring husband back because its too long we have contacted each other, we only comment on each other status on Facebook and when ever he come online he has never talks anything about coming back to me, i really had to give Dr.Mack a chance to help me out, luckily for me he was God sent and has made everything like a dream to me, Dr.Mack told me that everything will be fine, i called him and he assured me that my Husband will return, i was having so many doubt but now i am happy,i can’t believe it my husband broke up with his Italian lady and he is now back to me and he can’t even stay a minute without me, all he said to me was that he want me back, i am really happy and i cried so much because it was unbelievable, i am really happy and my entire family are happy for me but they never know whats the secret behind this…i want you all divorce lady or single mother, unhappy relationship to please contact this man for help and everything will be fine i really guarantee you….if you want to contact him you can reach him through dr.mac@yahoo. com..,

ADVERTISEMENT