By Aaron Cooper
November 13, 2015 at 5:00 am ET
Early last month, the USPTO issued its report to Congress on the implementation of the Leahy-Smith America Invents Act (AIA). Congress required this Implementation Report to be delivered four years after the AIA’s enactment.
I served as Chief IP Counsel for Chairman Leahy on the Senate Judiciary Committee as the AIA provisions were drafted, negotiated, and enacted. Throughout the process, we were in frequent communication with then-Director Kappos and his team to ensure the USPTO had the statutory structure, time, and resources needed to implement the AIA.
The USPTO’s implementation challenge was significant. The AIA created revamped procedures for patent examinations, post-issuance challenges, prior art determinations, and inventor assistance, among many other things. With that in mind, a few things—big and small—stand out from the USPTO’s report.
First, the extent and quality of outreach by the USPTO to industry stakeholders has been impressive. The USPTO’s Implementation Report lists more than 100 events at which USPTO officials spoke about the AIA, and more than 25 AIA-related “Roadshows.”
This outreach is important because one dynamic was clear while working on the AIA: companies focused on IP with large D.C. presences followed the AIA process and knew that, when enacted, it would create significant changes for how they protected their inventions. Many independent inventors and innovative small businesses, however, had their focus (not surprisingly) more on their research, development, and customer base than on legislation in Washington. But the changes made by the AIA would affect everyone. The USPTO’s outreach and education campaign has helped ensure that all corners of the patent community had the information they needed to navigate the AIA transitions.
Another key component of outreach has been through the USPTO’s rulemakings. The USPTO was charged with creating new rules to implement many of the AIA provisions, the most high-profile of which involved the post-issuance proceedings.
The extensive, transparent consultation and requests for public comment that that the USPTO has issued and its consideration of the patent communities’ (often conflicting) views deserves applause. To be sure, not everyone is satisfied with the USPTO’s interpretation or application of some AIA provisions. But that is to be expected. When we drafted and negotiated the AIA, even companies that supported the compromise legislation had concerns about certain aspects of it.
What is important—both for implementation and in the legislative process—is to ensure that all sides are heard and all views considered. The USPTO’s Implementation Report makes clear it has done that and continues to do so, particularly related to post-issuance proceedings.
Second, the Implementation Report makes clear that some AIA provisions that were highly controversial during the legislative process have had less of an impact in practice. The Supplemental Examination provision, for instance, was seen as a process that would be heavily used, and potentially misused, by patent-holders concerned about inequitable conduct defenses. Some even argued that Supplemental Examination would effectively replace ex parte reexamination. But the Implementation Report reveals that only 45 Supplemental Examination requests were filed last year and the USPTO found a substantial new question of patentability in just 22 instances. By contrast, there were 343 ex parte reexamination requests made over the same period.
The third noteworthy aspect presents the opposite situation: a provision that was not heavily debated in the AIA process but has had a significant effect in the real world. The AIA included a provision that allows third parties to submit, during examination, prior art and explain why it is relevant to a pending application. According to the USPTO Implementation Report, third parties filed more than 800 of these preissuance submissions last year, and they are on pace to nearly double that number this year. A core objective of the AIA was to improve the quality of patents issued, and the success of the preissuance submission program is key to that effort.
Finally, the USPTO Implementation Report includes several recommendations for further statutory changes. The Administration has indicated its support in other documents for many of the provisions introduced in the Innovation Act and the PATENT Act, which are pending in the House and Senate, respectively. This report does not wade into those issues, but it does address one controversial proposal that surfaced—and was rejected—during House Judiciary Committee consideration of the Innovation Act. With regard to the covered business method (CBM) program, the USPTO recommends “adhering to the sunset period and discontinuing CBM proceedings on September 16, 2020.” The CBM program always required a balance to provide an efficient method for clearing invalid patents in the financial service sector without dis-incentivizing investment in research and development in the long-term. The Implementation Report makes clear that the USPTO views the program as no longer necessary.
The USPTO Implementation Report begins by noting that the Leahy-Smith America Invents Act made the most significant reform to the U.S. patent system since the 1952 Act—others have written that the comparison should really be the 1836 Act. Either way, the success of the legislation in creating the landscape necessary for inventors to thrive requires all three branches: a statute passed by Congress, well-implemented by the Executive through the USPTO, and appropriately interpreted by the courts. The USPTO Implementation Report provides a good reason to believe the USPTO is working hard to do its part.
Aaron Cooper is of counsel in Covington & Burling’s Public Policy and Government Affairs practice group and former Chief Intellectual Property and Antitrust Counsel to Senator Leahy on the Senate Judiciary Committee. His practice focuses on developing and implementing short and long term policy objectives in the fields of intellectual property, antitrust, communications law, and related areas.