The First Year of First-Inventor-to-File: Applicants, Patentees, Assignees, and Petitioners Adjusting to the New Regime

Anniversaries invite reflection. On the one-year anniversary of the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA), we look back at the past year.

On March 16, 2013, many patent applications were filed just prior to the implementation of FITF. But many parties filed applications under the new rules, perhaps taking advantage of opportunities that they may afford.

Eighteen months ago, on a Sunday night at midnight, AIA Trials replaced inter partes reexaminations (IPX), but not before parties filed what the Board calls the “bubble” of cases—the last IPXes under the old rules. Those late-filed IPXes continue to work their way through the Board.

That night, IPR and CBM practice joined the ranks of essential litigation considerations. While many still do not fully understand the proceedings, parties should consider them as a part of overall litigation strategy, given the speed and effectiveness of early petitions. To date, parties have filed over 1,000 IPR and CBM petitions (of which over 100 are CBMs). And soon brave parties will file post-grant review (PGR) petitions on patents issuing from applications subject to FITF provisions of AIA, further altering the post-issuance landscape.

Parties are also taking advantage of preissuance submissions, filing over 1200 in the first fifteen months of availability. Supplemental examination filings are slowly increasing, with at least two district court stays related to those proceedings.

The Office no longer allows patents on tax strategies. The Best Mode requirement is nearly defunct. The AIA codified the § 101 prohibition on human organism patentability. AIA § 33(a). The inventor’s oath-or-declaration rules also changed dramatically, allowing assignees a broader role in filing for and prosecuting patents. 35 U.S.C. § 118.

In the year since the changeover, the Office has examined hundreds of Track One applications. To date for the 2014 fiscal year, the Office has granted 456 Track One patents. And the Office has issued some first-inventor-to-file patents in those twelve months, defying historical pendency rates exceeding three years. A brave new world, indeed.

We will also see the first AIA patents in action—in litigation, in due diligence, in freedom-to-operate, and in AIA trials, as well as in licensing, opinion, and contract work. The complexity astounds. What an exciting time to practice patent law.