Strengthening patent law leads to excess patent litigation -- clogs courts

The lack of Federal Circuit decisions is likely because AIA grace period cases have yet to ripen. President Obama signed the AIA into law on September 16, 2011, with changes to 35 U.S.C. § 102 becoming effective on March 16, 2013, nearly 10 years ago. Meanwhile, the average patent application takes 2.5 years and the average patent infringement suit takes three to five years. Further, parties settle or abandon around 90% of patent infringement lawsuits. Also, patent disputes will not involve grace period exception questions unless the prior art in the case originated within one year of a patent’s effective filing date. However, as pre-AIA patents slowly expire, AIA-based patents will become the focus of all patent litigation, and eventually, a case will arise that requires defining the grace period provisions. In the meantime, the uncertainty of the grace period provisions will cause parties to refuse to settle infringement suits and clog the dockets of federal civil courts.

B. Impact On the USPTO

While courts only see AIA patents after the patent is granted and ripens into a dispute, the USPTO began adjudicating AIA patents as soon as the AIA’s changes became effective. According to the USPTO, more patent applications facially rely on the 35 U.S.C. § 102(b)(1)(A) grace period to exempt inventor-originated “disclosures” than rely on 35 U.S.C. § 102(b)(1)(B) grace period to exempt prior art preceded by “public disclosures.” This might be because the USPTO requires a “[s]tatement regarding prior disclosures by the inventor or a joint inventor” but does not require a listing of “public disclosures.” Instead, the use of the “public disclosure” exception will likely appear during prosecution in affidavits used to traverse prior art cited in rejections. When the applicant and patent examiner disagree over the use of these exceptions, the dispute can be administratively appealed to the Patent Trials and Appeals Board (“PTAB”).