Eric E. Bensen on the America Invents Act

Eric E. Bensen on the America Invents Act

Years of efforts to reform U.S. patent law culminated in the enactment of the America Invents Act (AIA) on September 16, 2011. Although significantly narrower in scope than its unenacted predecessors, the AIA nonetheless makes a number of important changes. Among them is converting the U.S. system from first-to-invent to first-to-file and expanding the procedures available for review and potential cancellation or amendment of claims in issued patents. In this Analysis, Eric E. Bensen analyzes the AIA's major provisions. He writes:


     Purpose. To harmonize the U.S. patent system with foreign patent systems, promote certainty with respect to priority dates for inventions, and reduce costs associated with interference proceedings by converting the U.S. system from a "first-to-invent" to a "first-to-file" system, that is, to convert the U.S. system from one in which a patent is awarded (in most cases) to the first to reduce an invention to practice to a system in which a patent is awarded to the first to file for a patent on the invention.

     Effect. Completely revises § 102 (as amended, "Conditions for patentability; novelty"), considerably shortens § 103 ("Conditions for patentability: non-obvious subject matter") and revises § 135 (as amended, "Derivation proceedings") to accomplish the following.

     1. First-to-File. As a general rule, a person shall be entitled to a patent unless the claimed invention was "patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention," revised § 102(a)(1), or if the invention was described in an issued patent or published patent application that names another as the inventor and was effectively filed before the filing date of invention, revised § 102(a)(2).

      Notably absent from the list of invalidating prior art is the earlier reduction to practice (or earlier conception and later reduction to practice) of the invention by another. In other words, the first applicant for an invention that is not already available to the public by way of a patent, printed publication, public use, etc. will generally be entitled to the patent even if the applicant not the first inventor.


     Comments. Superficially, the move to a first-to-file system is intended to harmonize the U.S. patent system with foreign systems, where first-to-file is the norm. However, it is no secret that in a race to the PTO, which a first-to-file system necessitates, corporate patentees will have a distinct advantage over small inventors. Nonetheless, supporters of the first-to-file system have made several persuasive arguments to the effect that the impact on small inventors will be more theoretical than real. For example, supporters point to the fact that most applicants use their date of invention as the priority date and, thus, effectively operate under a first-to-file system now. They also point to the facts that it is difficult to prove priority in an interference proceeding because of the detailed record-keeping that is required and that interference proceedings are more likely to be used by corporate patentees against a small inventor than the other way around.

     Is First-to-File Constitutional? Policy issues aside, some have argued in opposition to the AIA that a "first-to-file" system is unconstitutional. Proponents of this view argue that "Inventor" as used Article I, § 8 ("Congress shall have the power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.") means the first to invent a particular invention. Under this construction, Congress does not have the power to authorize the issuance of a patent to a second inventor.

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