America Invents Act Creating Demand for IP Attorneys

10/19/11

The demand for patent attorneys has increased dramatically because of the September passage of the America Invents Act, which the September 13^th Law.com article, “What Effects Will the America Invents Act Have on U.S. Patent Law?”, hails as the “most sweeping patent reform in half a century.”


Known formally as the Leahy-Smith America Invents Act (AIA), this legislation is a federal statute passed by Congress and signed into law by Obama on September 16, 2011.

The changes this legislation puts forth are the most significant changes to the U.S. patent system since 1952. Changes include switching from a “first to invent” to a “first to file” system – for patent applications filed on or after March 16, 2013 – eliminating interference proceedings and developing post-grant opposition.

What do these changes mean in layman's terms? “First-to-invent” means essentially, just what it sounds like: the first person to invent something gets the patent, whereas with “first-to-file”, the first person to apply is granted a patent.

Why the change? Supporters believe it will make the application process easier as well as put U.S. patent law on par with other countries, most of which follow the “first-to-file” system. Additionally, those in support of the “first-to-file” system believe it will get rid of expensive interference proceedings at the USPTO and decrease costs for U.S. applicants who are seeking patent rights outside of the U.S.

Critics of the “first-to-file” system believe it gives large firms an advantage, as they tend to have more well-established internal patenting procedures, patent committees, and in-house attorneys. They also are concerned that it could compromise the level of patent protection domestically.

According to the September 13^th Law.com article, Paul Michel, a retired judge of the U.S. Court of Appeals for the Federal Circuit, was quoted as saying of the legislation: “There will be heightened uncertainty for the rest of the decade. The bill makes fundamental changes, and many sections are poorly written and ambiguous.”

Michel is also of the opinion that the “first-to-file” system will mean an increased workload for in-house patent attorneys. Why? If companies have inventions in process its attorneys will most likely have to file new patent applications on a more regular basis in order to avoid competitors getting ahead of them at the patent office.

Sophia Pearson wrote in a Bloomberg report of IP lawyers that they “are in such demand that their specialty may account for more than 15 percent of law firm job openings while representing just 3 percent of U.S. lawyers.”

Why such a small percentage? Largely, because in order to become a patent attorney, the U.S. Patent and Trademark Office requires individuals to pass an additional separate bar exam.

Undoubtedly, it will take time for the dust to settle around the new legislation, for critics and proponents alike. Regardless, with the continual proliferation of technology in particular, and the more frequent litigation that seems to follow it, all things intellectual property seem to be the legal professions next big trend.