What the Reform Act Does NOT Reform
Perhaps the first and most important feature of the 2011 patent “reform” legislation is what it does not reform.
The changes made by the AIA are significant and numerous, but they change little of the substantive law on patentability and infringement.
For example, essentially unaltered are:
(1) the standards of novelty and unobviousness in relation to the prior art (though the Act will, prospectively, alter the definition of prior art),
(2) the enablement and written description requirements,
(3) patent eligible subject matter,
(4) claim interpretation,
(5) the doctrine of equivalents and prosecution history estoppel,
(6) remedies for infringement, and
(7) direct and indirect infringement (active inducement and contributory infringement).
These important matters will continue to be defined by the constant flow of case law.
The switch to first-to-file priority is significant, but it goes into effect only for applications filed 18 months after enactment. Many, many applications and patents will be governed by the “old” law. Alas, many of us may expire before the first-to-invent principle does (fully). Also, standards for proving invention (conception, reduction-to-practice, etc.) will continue to be relevant to determine issues such as co-inventorship and ownership.
Also, the grace period includes an inventor disclosure rule that will, arguably, allow an inventor to set a priority date by a “public disclosure” of the invention (up to a year before filing), which eliminates from the prior art a subsequent, pre-filing independent disclosure by another. The Act does not define what constitutes a public disclosure for this purpose.
Never has so much attention been focused on a patent enactment that accomplished so little.
