America Invents Act & It’s Impact on Patent Law

October 10th, 2012

The Leahy-Smith America Invents Act (AIA) was enacted into law on September 16, 2011.  The act modernized US patent law in an effort to harmonize our system with the rest of the world.  A number of the AIA’s significant changes to patent law became effective last month on September 16, 2012, while the remainder of changes will take effect on March 16, 2013.

This article will review the basics of patent law and describe some of the AIA’s more significant provisions.

Patent Law Overview

Patent law gives the patent owner the right to exclude others from practicing their patented invention.  This means means the holder of the patent can prevent others from manufacturing, using, selling, or importing the invention.  However, a patent doesn’t automatically give the patentee the right to practice the invention himself since, it may still be restricted by other patents.

There are three types of patents one can be granted:

  1. Utility Patent (for the functional aspects)
  2. Design Patent (for the ornamental aspects)
  3. Plant Patent (for new or distinct varieties of plants).

The most common patent is a utility patent, which can be granted for a process, machine, manufacture, or a composition of matter.

Before being granted a patent, the invention must qualify as useful, novel, and non-obvious. In addition, your application must meet the detailed requirements for descriptions and drawings.


America Invents Act: The Changes

In total, there are about twenty changes that the America Invents Act (AIA) makes to US patent law.  However, there are a few that are more important and warrant our closer attention:

 Best Mode (Effective as of September 16, 2011)

The best mode is an application requirement, in which the inventor must disclose the best way to practice the invention.  With the implementation of the AIA, failure to disclose best mode is no longer available to the USPTO (United States Patent and Trademark Office) as a ground for invalidity, unenforceability, or cancellation of a patent.

Prior Art Submission (Effective as of September 17, 2011)

Third parties have always been allowed to submit prior art in another’s patent application with the intent to block the grant of the patent.  But now, those third parties remain anonymous and the USPTO also doesn’t have to inform the patent applicant that third party prior art has been submitted on their filed application.

 First-inventor-to-file (Effective March 16, 2013)

One of the most important changes to patent law has to do with priority.  Starting on March 16, 2012 priority will be given to first inventor to file an application, or to the first inventor to disclose the invention to the public, assuming that they then file within a year.   The implication with this change is that an applicant will need to file early and file often.  This new system will replace the “first to invent” regime.  Also, the inventor now has a one-year grace period between public disclosure of an invention and the actual filing of the application.

 Changes in the Definition of Prior Art (Effective March 16, 2013)

The new definition of prior art now provides for globalization, which means if an invention was in practice anywhere in the world, the applicant cannot obtain a patent for their supposed invention.  Therefore, prior art has expanded and no matter whether it’s domestic or foreign prior art, the filing date of that prior art rules.  Also, “known or used by others” is eliminated from the definition of prior art.  Added to the definition is prior art that is in  “public use”, “on sale”, or “otherwise available to the public” no matter where in the world.  Also, the 1-year grace period for third party prior art is eliminated, unless the prior art was derived from the patentee or the patentee disclosed first.

Further Resources

The Prior Art Expansion under the AIA


La-la-lawsuits: A Look Back at December’s Finest Litigious Moments

December 30th, 2011

Croatian journalist James Braddock has sued Angelina Jolie for copyright infringement of his book, The Soul Shattering (his website discusses the legal dispute in detail).  Braddock claims Jolie’s directorial-debut documentary, In the Land of Blood and Honey, infringes upon his 2007 book.  Braddock allegedly discussed the book in detail with the Bosnian producer of the film before the film was made.  The movie commenced production in 2010, and Braddock only recently filed the lawsuit, just weeks before the scheduled release.  Because of the late timing, the judge seemed reluctant to grant Braddock’s motion for a temporary restraining order and Braddock withdrew the motion before the decision was finalized.  The case was filed with the federal court in Illinois, but the judge has indicated a likelihood he will transfer it to California, given that the parties – Croatian and Californian – have pretty much no connection to the midwest state.

The Meester family will be having a peaceful Christmas, now that  the Gossip Girl star Leighton Meester and her mother Constance Meester have resolved their legal dispute.  The suit began over Leighton alleging that Constance misused the actress’s money, then developed into the issue of whether Constance was entitled to compensation for her alleged role in guiding her daughter’s career.  Most recently, Constance withdrew her claims leading to a default judgment in favor of Leighton.

The estate of Bruce Gary, drummer of the band The Knack (best known for the song “My Sharona”) has sued Capitol Records, claiming unpaid royalties for digital downloads.  The issue is whether digital downloads on platforms such as iTunes count as a ‘license’ of the master or a ‘sale’ of the phonorecords under the recording agreement.  Phonorecords implies the physical album sale, rather than digital and the label pays significantly lower royalties to artists on sales than licenses.  For a license, the royalty rate could be up to 50%, whereas for a sale the rate would likely be closer to 12%.

2011 has been a rough year for The Hangover II.  Earlier this year, Tyson’s tattoo artist sued over the use of the iconic face tattoo.  Now Louis Vuitton is suing, claiming that the bag carried by Zach Galifianakis marked LVM was a fake.  In the scene, Galifianakis says, ” “Careful, that is.. that is a Louis Vuitton.”  LV is suing under state and federal claims for unfair competition, false designation of origin, and trademark dilution. The full complaint can be read here.

Rough Week at Spotify

August 1st, 2011

Barely in the US for two weeks and Spotify has been hit with a patent lawsuit and some bad press about a controversial cookie.

Last week, PacketVideo sued Spotify for patent infringement, claiming that Spotify is using elements of a music delivery technology patent secured by PacketVideo in the 90′s.  The patent broadly covers a “device for the distribution of music in digital form,” including wireless devices.  Spotify replied witht he following: “PacketVideo is claiming that by distributing music over the internet, Spotify (and by inference any other similar digital music service) has infringed one of the patents that has previously been acquired by PacketVideo.  Spotify is strongly contesting PacketVideo’s claim.”  PackVideo is looking for a permanent injunction, damages, and treble damages because they argue the violation is willful.  Read the filing here.

On July 29, researchers at UC Berkley published research disclosing that Spotify (and Hulu too) has been using a controversial cookie that can’t be deleted and works even if the user blocks cookies or operates the browser in stealth mode.  The cookies actually respawn (I find the constant use of this word in the paper especially disturbing for some reason) once they are deleted.  So basically, even if you opt out of all tracking options, you will still be tracked.  After the research was published, both Hulu and Spotify allegedly removed the cookies.  “We take the privacy of our users incredibly seriously and are concerned by this report,” a Spotify spokeswoman told Wired.  ”As a result, we have taken immediate action in suspending our use of Kissmetrics whilst the situation is investigated.”  This may not mean much for users who have already downloaded and used Spotify, as the cookies were enabled in that earlier version.

Apple Applies for Infrared iOS Camera Patent

June 6th, 2011

On June 2, Apple applied for a patent on a new type of infrared technology, which may be included on their next generation.  I am far from a scientist or engineer but I will try to explain the technology as best as possible.

When the camera is aimed at an image, it will detect whether there is infrared data associated with the image.  If such data is detected, the device will decode it.  The infrared data may contain information about the image or may modify the device’s operation.

The infrared data could even disable a function on the device.  This would make it possible for concert venues and movie theaters to stop attendees from illegal recording the shows/movies. When the camera is recording a video or taking a picture and receives the infrared signal that recording it prohibited, it would immediately shut down the recording function.

This type of technology could also be used in a museum or other exhibition.  When you take a photo of a work of art, information about the piece or artist would be sent to the phone, capable of even being an audio file acting as a form of an audio tour guide.  The infrared could also add a watermark to photos, indicating where the image was taken.

Read a more detailed description here.