Before the enactment of the American Invents Act (“AIA”), I identified four key provisions of the new law that will impact retailers. I have asked my colleague Daniel Farris to provide details regarding what retailers need to know about the rest of the AIA. Daniel is a part of my retail patent litigation team with a particular focus on internet and computer technologies.
The following is the first in a three part series providing greater depth and analysis of the new provisions of the AIA. This post focuses on patent prosecution and the changes in the way patent rights are created by the AIA.
First-To-File System
Perhaps the most notable change made to the U.S. patent system by the AIA was the change from the first-to-invent to the first-to-file system. The switch brings the U.S. system more in line with the way the rest of the world’s patent systems work. Unlike most of the rest of the terms of the AIA, the changes made to 35 U.S.C. § 102(a) will not go into effect until March 13, 2013.
The impact of the first-to-file system has been widely debated. While it creates greater uniformity amongst the major patent systems of the world, some speculate that the quality and completeness of applications and claim language will suffer as inventors race to the Patent Office to file first. One reality of the AIA will be increased pressure on inventors to file applications earlier in the development process, much closer to conception and before commercial use or public reduction to practice. This pressure to file, as well as pressure to publicly disclose the invention near conception, will likely be greater at corporations with large patent portfolios and substantial research and development budgets, particularly given the amendments that allow assignees to file on behalf of inventors and the limitations on prior art. Some worry that the result of all of this pressure may be to create an even more overburdened Patent Office, which will be forced to deal with less specific patents, making for murkier patent claims. While the first-to-file system creates clarity with regard to priority date, and eliminates some uncertainty surrounding “conception” of patentable subject matter, that clarity may come at the cost of quality in patent applications and ultimately patent claims. The fear for retailers is that the murkier claims that may result give patent trolls another series of broad claims with fuzzy boundaries that we saw coming out of the Patent Office in the 1990’s in the internet space. They increase uncertainty and cost of patent troll litigation. The Patent Office had resolved many of these cases, but first-to-file could bring them back.
Continue Reading How the AIA is Changing Patent Rights for Retailers