Introduction
The Leahy-Smith America Invents Act (AIA), signed into law in 2011, represents one of the most significant overhauls of U.S. patent law since the 1950s. It introduced key changes affecting how patents are prosecuted, challenged, and enforced.
Key Provisions
- First-Inventor-to-File System
- Replaced the long-standing “first-to-invent” system. The United States was the last major economy to use that system, so this change brought US patent law into alignment with other major economies. Note that there is some risk that the system will one day be found unconstitutional, as the language in the US Constitution regarding patents empowers Congress to secure “for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The constitutional argument is that the second person to invent a thing is not the inventor regardless of the patent filing date.
- Now, the effective date of filing usually determines priority (with limited exceptions), aligning the U.S. more closely with international patent norms.
- Post-Grant Proceedings (the PTAB)
- Inter Partes Review (IPR): Allows third parties to challenge a granted patent’s validity based on prior art patents and printed publications. Note that IPRs have been through many legal challenges, and one result is that the USPTO director has a lot of discretion about how the IPR system operates.
- Post-Grant Review (PGR): Available for the first nine months after a patent issues, allowing for broader grounds of challenge.
- Covered Business Method (CBM) Review: A transitional program for financial services-related patents (largely phased out now). Quick trivia: One of my patents was the first patent to be adjudicated in a CBM review (it was valid).
- Prior User Rights
- Expanded the concept that if you were already using an invention in secret, you may have a defense against later infringement claims (though certain conditions apply).
- Supplemental Examination
- Enables patent owners to request the USPTO review information that may be relevant to the patent’s validity, potentially curing certain issues (like inequitable conduct).
Impact on Inventors and Businesses
- Accelerated Dispute Resolution: Post-grant proceedings via the Patent Trial and Appeal Board (PTAB) can be faster and often cheaper than district court litigation (but note that both can take place, and in any case an IPR can easily cost an inventor $500,000 to defend — more than the average inventor working out of their garage can afford).
- Need for Prompt Filing: The move to “first-inventor-to-file” encourages inventors to file as soon as they have a complete invention, reducing risks from public disclosures.
- Global Harmonization: Aligning the U.S. patent system more closely with global standards makes it easier for innovators seeking protection abroad.