America Invents Act Impact on Patent Operations

in Patent Operations

The America Invents Act (AIA) reflects a significant overhaul to the U.S. patent system, which most companies indicate will have substantial impact on their patent operations. The AIA will require IP leaders to make policy and procedures changes. Additionally, there are some significant fees increases, which require that companies increase their patent operations budget to fund additional staffing and external legal resources. Although many companies may reduce patent application filings to mitigate fee increases.

The topics that we investigated fell into eight core areas, which include: First inventor to file; Section 102 Disclosure; Costs – Increase in USPTO fees; Pre/Post-Grant Proceedings; Patent monitoring and searching activities; Virtual Marking; and Prior User Rights.

Overall, companies indicated that the major changes necessitated by “First Inventor to File” are process focused: 1) Approve and file applications quickly 2) Increase speed of disclosure from inventors and eliminate gaps between conception and invention disclosure. Responses indicate that IP leader interpretation of Section 102 disclosure provisions are mixed, although the most companies indicated that they to do not plan on a policy change at this time. The USPTO fee increase is causing the majority of companies to increase the patent budget, although 24% of companies intend on reducing filings. The majority of companies recognize that the new pre and post grant proceedings provisions will increase costs and workload.

IP leaders will need to request contingency monies to reflect USPTO fee increases, additional staff and/or law firm cost increases. Many changes of the Act will not take place until March 2013 and there will be some uncertainty with implications of some of the new provisions. Many companies will be compelled to refine their invention submission process and to streamline and improve responsiveness while reducing unwarranted patent filings. This will enable companies to reduce costs while improving the power of their patent portfolio.

Rob Williamson

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