25 Must Read Articles on the America Invents Act

25 Must Read Articles on the America Invents ActThe world of patent law is all abuzz over the America Invents Act. If you need to brush up on what the AIA is about (whether you’re preparing for the Patent Bar exam or you’re a patent practitioner, an inventor, small business owner, or an entrepreneur) here are the top 25 must read articles for you.

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The Basics of the AIA

Here we’ve got a list of the official resources for learning about the AIA. These include the USPTO, the White House, and GovTrack. The USPTO has several different sections on their site providing details for the rule changes so we’ve paid special attention to that.

Leahy-Smith America Invents Act Implementation If you want to go straight to the source, you can visit the Leahy-Smith America Invents Act Implementation page on the USPTO website. They have links to webcasts and other news on the AIA updates.

White House | Patent Reform: Celebrating the One Year Anniversary of the America Invents Act The official White House introduction of the AIA can be found in the link above. The article outlines the goals of the Act as well as provides a short video featuring a discussion by entrepreneurs.

GovTrack | H.R. 1249 (112th): Leahy-Smith America Invents Act View the official bill online and/or download it in PDF format along with a summary.

USPTO | AIA Informational Videos This page includes links to several videos and webinars on the AIA including a few with USPTO officials, the White House, and some official training.

USPTO | AIA Frequently Asked Questions This helpful page offers links to frequently asked questions on the Act. The questions are broken down by section spanning the major areas impacted by the law. You can get good details and answers to your questions by reviewing these pages. There is also a page where the USPTO explains how to submit your comments on the AIA.

USPTO | Patents Examination This reference page provides information about AIA provisions that impact patent examination and supplemental examination. You can find helpful PDF files in addition to links to the FAQ’s pages above. It’s organized by section spanning the major areas impacted by the law.

USPTO | Inter Partes Disputes This web page includes links to PDF files and provides summaries on Inter Partes disputes as impacted by the AIA provisions. Inter Partes disputes include inter partes review, post-grant review, the transitional post-grant review for covered business method patents, and derivations.

USPTO | Fees and Budgetary Issues Learn how the AIA impacts fees to be paid to the USPTO. The web page includes summaries and links to dozens of PDF files and resources on the USPTO website.

AIA Summaries

You may not have time to review the America Invents Act in all its detail, so here are the best summaries we’ve found to help get you up to speed quickly.

Todd L. Juneau | The America Invents Act as of Sept. 2012 – Patent Law Changes Summary Powerpoint slideshow that boasts it’s the most concise, easy to understand summary of the AIA changes. The changes are ordered from 1 to 24 and although it’s a quick read, it’s packed full of solid information on the AIA.

National Law Review | Summary of the America Invents Act Nice written summary of the AIA that provides a general overview of the major changes. It’s a short read that will help get you up-to-speed on the basics.

Fish & Richardson | Seminars, Events & Webinars Very nice presentations covering post-grant proceedings. Part I delves into the Inter Partes Review and Covered Business Method Patents – the First Five Months. Part II covers the Inter Partes Review and Supplemental Examination – Recent Developments. You can view the powerpoint presentation in PDF format and listen to the webinar.

AIPLA | Summary of the America Invents Act Nice, quick summary of the AIA in outline form. It’s very easy to understand and refer to at a glance if you need help seeing an overview of what the Act entails.

First Inventor to File Provisions

One of the major provisions of the AIA will change the patent system from a first to invent system to a first to file. This will have profound impacts on inventorship in the U.S. Review these articles to learn more about the AIA first to file provisions.

Patent Docs | AIA Overview: First-Inventor-to-File Provisions This in-depth article provides insights into the First to File provisions of the AIA. They break down each affected section of 35 U.S.C. 102 and how the AIA impacts it.

Fast Company | Untangling The Real Meaning Of “First-To-File” Patents This article provides a layman’s overview of what the first to file changes mean.

Workman Nydegger Intellectual Property Attorneys | Guidelines for Navigating the First-to-File Provisions of the AIA Taking Effect On March 16, 2013 The authors outline what they believe are the most important implications and considerations for transitioning to the first to file system.

JD Supra Law News | Major Patent Law Changes First-to-File Provisions – Effective March 16, 2013 They provide a 4-page PDF report that outlines the major points of the first to file provisions.

Impacts of the AIA

This next set of articles covers ideas on how the AIA may impact the patent law system and inventorship.

Tech Crunch | First-To-File Patent Law Is Imminent, But What Will It Mean? Nice article outlining the first to file changes including easy to follow tables along with a summarized discussion along with how it may impact inventors.

Impact of the AIA on Patent Litigation: Changes that May Affect Your Choice of Forum A discussion on how the America Invents Act may impact forum choices for an owner of a U.S. patent (including district court and the USITC).

PatentlyO | The Effects of the America Invents Act on Technological Disclosure Well thought out opinion piece on how the disclosure of technological information may be impacted from the AIA.

RedmondMag | Q&A: A Patent Attorney Explains How the ‘America Invents Act’ Will Affect Tech Examines how the new act will impact costs for filing a patent application, length of time for examination, and preliminary patent application filings.

Entrepreneurs, Small Business and the AIA

We’ve collected articles around the web providing a discussion of how small business and entrepreneurs may be impacted by and prepare for the changes to patent law due to the America Invents Act.

Forbes | New Patent Law Means Trouble For Tech Entrepreneurs Opinion piece on how the new Act may be undermine technology entrepreneurship.

Forbes | How Entrepreneurs Can Thrive Under the “First-Inventor-to-File” Patent System Article discusses strategies inventors should use to prepare for the new patent laws under the AIA.

America Invents Act: Hurting Startups, Helping No One Opinion piece on how the AIA may cause problems for small businesses and entrepreneurs.

White House | Entrepreneurs Applaud America Invents Act, Say It Will Create More Jobs Short video and article defending the Act and how it will help small businesses.

Venture Beat | The top 5 things companies should know about the America Invents Act Ideas for how small business can prepare for the AIA.

Those are a few of the best articles on the America Invents Act around the web. If you read all these you’ll be near to an expert on the AIA along with ideas on how it may impact inventors, small businesses, and patent law.


Eamon Wall Shares Tips On Getting Your First Job as a Patent Agent or Patent Attorney

When did you become a patent agent/attorney?

I’ve been a patent attorney since 1994. Two years corporate, the rest in private practice.

I love it. It’s a really great career. I don’t really sweat the economic ups and downs. I know what I am doing, I like what I do and my skill set is valuable to companies and in demand. I do work hard, but that suits me.

I did not know much about this while I was an engineer. That said, by the time I started attending law school at night it was for the sole purpose of entering this field.

Why did you think this would be a good career transition for you?

While working as an engineer I became familiar (a little bit) with the patent field. It struck me as critical to the success of a company and, therefore, a critical function within a company.

My view of engineering was becoming a bit jaded as we went into a paperwork intensive iso-9000 regime. I also knew I needed to get further education; namely, an MBA, MS EE or law degree. I chose the latter because I wanted to be part of what appeared to me to be an upcoming corporate emphasis on intellectual property, particularly the creation and use of patents to protect technical innovations.

What is one thing you like about working as a patent agent/attorney?

I like learning something new every day. I like taking a complex innovation and finding way to express its essence in a clear and concise manner to further my clients’ interests.

What is one thing you dislike about the work?

Very little. I really like what I do pretty much every day. I am very busy at times and often need to focus on immediate client needs to make sure that the many time constraints associated with my practice are managed properly. Scheduling control is critical, and sometimes I just need to handle what’s next rather than what I wish to work on.

Do you feel like there are advancement opportunities?

Absolutely. This is a challenging job requiring technical, communication and legal skills. If you know what you are doing then you can move into different areas within the broad patent or intellectual property fields. There are opportunities in private practice as well as in corporations and government. There are opportunities on the technical side as well as legal/business/venture sides.

Do you have any tips for people who are looking for their first job in the field?

Learn to communicate well. Learn to speak and to write effectively and logically. Find some way to demonstrate this ability to a potential employer. Find some way to demonstrate an ability to learn quickly. Develop the critical ability to distill a complex topic or concept to its essence, along with an ability to communicate this essence within the context of whatever narrative is appropriate (a patent application, a letter to a client or opposing party, a letter to the CEO or board of directors etc.).

I like to see some evidence of discipline; an ability or determination to stick with something until it’s done. Things such as military experience, night school, work experience and the like are very interesting to me as a hiring partner. Volunteer to write something for a prospective employer. Challenge them to test your ability, to give you the opportunity to show that you really know what is necessary for this job.

One of the problems for a patent firm or company is the fact that the time investment in training a new patent attorney or patent agent is high. The claims of a patent application (the most important part), will likely be poorly written by the new hire for six months to a year. That’s just the way it is. The trick for both the new hire and the company or firm is to find a way to quickly ramp up and become somewhat self sufficient.

New hires should learn the technology of the company or client as well as they possibly can. They should do this quickly, and not just on business time. A primary skill of a patent attorney or patent agent is very quickly digging down to the specific technical minutia necessary to express the invention/innovation, how the invention should be practiced and so on.

We don’t have the time or budget to write a treatise on the invention. We need to focus on what is before us and why it is novel/nonobvious. Muddled thinking leads to muddled writing/speaking, poorly drafted patent applications and the like. This is to be avoided.

Patent Attorney Career Spotlight: Bob Siminski

When did you become a patent agent/attorney?

I became a patent attorney back in 1990.

Why did you think this would be a good career transition for you?

I knew that patent attorneys generally used a combination of their scientific and legal knowledge which was intriguing.

What is one thing you like about working as a patent agent/attorney?

The opportunity to work with creative people on a daily basis. In the field of patent law we work on scientific subject matter which sets up nicely for a guy who studied chemistry and worked in chemistry labs.

On the trademark front, I get to work with entrepreneurs who are investing in product or service branding. In the field of copyrights we work with different types of “artists” – musicians, photographers, painters, sculptures, software developers, etc.

What is one thing you dislike about the work?

There isn’t much I don’t like. If I had to name one it would probably be dealing with the long lag time between filing a patent and receiving the initial response from the patent office.

Do you feel like there are advancement opportunities?

The field of intellectual property law, particularly patent law, is one of the growth fields in the law. Work in this area is largely a function of technological expansion, and technology over the last few decades has grown exponentially. Positions for patent attorneys are available in house with corporations, in private practice with law firms or with the US Patent Office for example.

Do you have any tips for people who are looking for their first job in the field?

In order to become a patent attorney you must have enough of a scientific background to qualify to take the Patent Bar Exam.

Most people entering this field have at least a Bachelor of Science degree, with many now pursuing more advanced technical degrees before heading off to law school.  You don’t need a technical background for the fields of trademark and copyright law, but it certainly doesn’t hurt if you do.

When I look to hire new or lateral attorneys, I love to see a combination of technical work experience along with their technical degree. By and large these people have a basis to relate to inventors  who have spent their careers in the field of engineering or the sciences.

James Drake Talks About Registration Numbers and Patent Attorney Career Insights

How Did You Enter the Field of Patent Law?

I have been a patent attorney since 1990. I got into the field in quite an unusual fashion. When I graduated from high school, I enrolled in a six year BS/MD program, but that stalled when I had to operate on live animals in physiology lab.

Possessed of a Bachelor’s Degree in Biology but no immediate job prospects, I decided to enroll in law school. Midway through my second of three years in law school (this was in Cleveland, Ohio), I saw an advertisement on the job board for a law clerk. The prerequisite for the position was a B.S. degree in science. It was also paying significantly more than most other law clerk jobs available at the time.

It turned out that the job was with the Patent and Licensing Department of BP America, which had recently purchased Sohio. The reason a B.S. degree in science was necessary was because there is a separate certification that you must earn above and beyond the state bar examination in order to call yourself a patent attorney. Most other areas of law allow you to begin practicing as soon as you graduate and pass the bar exam. As a result, this is a field with a limited number of practitioners.

My registration number is 34,584, which was assigned to me in 1990. At the time, it was rare to find a practitioner who was either active or alive with a number under 20,000. This is because the numbers have been handed out consecutively since 1910.

Currently, the registration numbers are in the 75,000-80,000 range. This big jump is primarily a result of higher pass rates on the patent bar exam. Nonetheless, it is still a limited field of practice and practitioners who have been around as long as I have tend to run into colleagues we have met previously more often than not. As an example, the attorney who hired me for the BP America job hired me again six years ago for a company that was spun off from BP.

Insights on Working as a Patent Attorney

The job is very interesting because you are typically working with new technology that no one has seen before. Job advancement varies depending on whether you are an in-house or outside counsel.

In private firms, the usual 7-10 year period of being an associate attorney is followed by becoming an equity partner in the firm if you can generate a sufficient amount of business. In corporations, advancement is more haphazard, as few corporate law departments are sufficiently large to allow for a typical progression. Despite this, patent attorneys may be found at all levels of a corporate structure.

In the mid-90s, I worked for a chemical company where the CEO and the VP of Human Resources were both patent attorneys, although no longer practicing. Overall, pay for patent attorneys is at the high end of the compensation scale for attorneys, primarily because of the specialized skills of practitioners.