Are We Greeks or Romans? New Patent Law Means Challenges for U.S. Innovators

As mentioned in: Forbes
September 30, 2011
The Smith-Leahy America Invests Act (AIA), signed into law in September 2011 with the intention of reducing legal disputes and streamlining the patent process, changes the current patent system in ways posing a number of challenges to innovators, reports Forbes.

As of March 16, 2013, the law will award the patent to the inventor who filed first, as opposed to one who invented first, resulting in pressure to file faster.

"That particular change to the new laws will have a bigger impact on small inventors and a minimal impact on big companies," says Jack Barufka, head of the Intellectual Property practice at Pillsbury. "Even before the AIA, most large companies were operating under the assumption that their patent applications would be subject to a 'first-to-file' standard because that standard has governed elsewhere around the world where they do business."

The law also allows various venues for those who want to challenge a patent at the USPTO. "The offset is that the standard (during a process called an 'inter parties review') for instituting a proceeding has been raised from the traditional test – of whether there was 'a substantial new question of patentability' – to the new test of 'a reasonable likelihood that the petitioner would prevail' on at least one of the patent claims being challenged," explains Barufka.

There are provisions in the new law that could help smaller companies. As a result of these provisions, says Barufka, "there is now less of a threat that companies relying on trade secret protection will risk facing an injunction or damages if a third party obtains a patent on the process in question."