In the News

Aaron Charfoos Examines the First Year of The America Invents Act (AIA)

Says In-House Counsel Need to be as Aware of the Act’s Changes as Patent Lawyers

April 30, 2014

Aaron Charfoos, Chicago-based member of Dykema’s Intellectual Property Group and Litigation Department, authored an article that appeared in the April 22, 2014 issue of Inside Counsel. Titled, “The America Invents Act: Big Changes Not Just for Patent Lawyers,” the article identifies some of the key trends that have emerged in the patent process since the passage into law of the America Invents Act (AIA) in March 2013.

Charfoos notes that one of the most significant changes of the Act was the replacement of the old “first-to-invent” patent system with the new “first-to-file” system. Charfoos observes that while past revisions to patent law materially affected a small number of patent lawyers, the conversion to “first-to-file” means in-house counsel needs to be—more than ever—tightly integrated with research and development departments, so that new inventions can be identified more quickly and entered into the patent process with greater speed. Now, Charfoos points out, “the race goes to the swiftest.”

Charfoos also writes that the Act brings into play two new mechanisms—the Inter Partes Review (IPR) and the Covered Business Method (CBM)—by which the validity of a patent can be challenged through trial at the Patent Office. Charfoos outlines the significant ways in which these two new mechanisms differ from traditional validity defenses through civil litigation, and says in-house counsel needs to stay up-to-date on these developments “so that their patent strategies and procedures take full advantage of the new law.”

To read this article in its entirety, click here.