First published in Vol. 40, Number 1, the Winter 2012 issue of the American Intellectual Property Law Association’s AIPLA Quarterly Journal, Robert Armitage’s (senior vice president and general counsel for Eli Lilly and Co.) clear and impassioned explanation of the America Invents Act (AIA), including an excellent backgrounder on why things had to change, is now available on the USPTO website. This is worth saving.
Here’s the author’s summary of the profound changes brought on by AIA:
The “loss of right to patent” provisions were all repealed. The “best mode” requirement was made a functional dead letter. All references to “deceptive intention” were stripped from the patent law. A new “supplemental examination” procedure was instituted to address any error or omission in the original examination of a patent and bar the defense of patent unenforceability once the procedure has run to completion. Finally and most dramatically, it concisely limited “prior art” on which the novelty and non-obviousness of a claimed invention was to be assessed. Nothing can qualify as prior art absent representing a prior public disclosure or an earlier patent filing naming another inventor that subsequently became publicly accessible—casting aside 175 years of a more complicated, subjective, and uncertain standard for patenting.
Analysts should pay particular attention to statutory section, § 257, on supplemental examination, beginning on page 109 of the PDF, which serves to lessen the risks associated with inequitable conduct defenses to infringement, thereby increasing a patent’s value. “Supplemental examination” allows a patent owner to ask the USPTO to consider, reconsider, or correct information that is or may be relevant to the patent. After (no more than) 30 days, USPTO certifies if new questions of patentability arose as a result of the new information (and scheduling subsequent reviews); if no such concerns developed, the matter is over.