From Sterne Kessler
America Invents Act: Articles and Analysis
On September 16, 2011, the Leahy-Smith America Invents Act (AIA) was signed into law by President Obama. The AIA represents the most significant change to the U.S. Patent Law System in more than sixty years, with direct impact on those 1) focused on patent prosecution, 2) interested in challenging patents at the United States Patent and Trademark Office, and 3) in pursuit of traditional patent litigation and enforcement via the U.S. District and Appellate Courts, as well as the International Trade Commission.
The Sterne, Kessler, Goldstein & Fox team invested countless hours digesting and analyzing what the AIA means to the practice of patent law and the implications for protecting and enforcing intellectual property rights.
March 16, 2013 has come and gone, bringing with it the effective date of Section 3 of the American Invents Act (AIA). Section 3 of AIA includes the first-inventor-to-file provisions (FITF). Most of these provisions are codified in Title 35 of the U.S. Code, most notably, as a complete rewrite of 35 U.S.C. 102 – the section that defines what constitutes prior art. The effective date provisions of AIA Section 3 are found in Sections 3(n)(1) and 3(n)(2). These two provisions provide a complicated transition period requiring practitioners to consider two regimes – pre-AIA 102 or AIA 102 – when contemplating claiming strategies. Significantly, while sections 3(n)(1) and 3(n)(2) will not actually be codified in Title 35, they nonetheless will impact patent law practitioners for years to come. Thoughtful prosecution and claim presentation will allow a practitioner to exert some control over which section 102 applies for examination of a particular application.
The transition to the first-inventor-to-file (FITF) system occurred on March 16, 2013. To prepare for implementing the change to the FITF system, the United States Patent and Trademark Office (USPTO), on February 14, 2013, published the final rulemaking entitled “Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act” (hereinafter, final rules) in the Federal Register (78 Fed. Reg. 11024).
The stay provisions of America Invents Act § 18(b) related to covered business method patent review (“CBM review”) were recently applied in Market-Alerts Pty. Ltd. v. Bloomberg Fin. L.P. et al., C.A. No. 12-780-GMS (D. Del.). On February 5, Judge Sleet granted defendants’ motion to stay litigation in light of a pending petition for CBM review. This advisory addresses the key takeaways from the Court’s opinion—one of the first to grant a stay under AIA § 18—of which litigants and potential litigants should be mindful.