With last week’s 10-year anniversary of the Leahy-Smith America Invents Act (AIA), and Senator Leahy still a powerful voice on the Senate Judiciary Committee, the timing may be right to refine the decade old statutes. Indeed, over the past few months there have been a number of discussions inside the Beltway to consider potential updates.
While there will always be a small, vocal minority that would like to see the AIA go away entirely, it seems that only slight refinements to the existing statutes are on the foreseeable horizon.
As usual, I’ll focus on the PTAB end of the AIA discussions. But it is worth noting that (apart from the AIA statutes) there is a palpable interest in updating the venue statutes given the recent developments in the WDTX. That particular legislative fix seems to be just a matter of time (as does some kind of permanent Arthrex fix)
Back to the PTAB. Before getting to the refinements that are most likely, let’s get to major changes that have been discussed that are very unlikely to make any legislative proposal:
-Bringing back CBM for a limited time
-Adding 101 to IPR
-Adding 112 to IPR* (but see below)
-PTAB standing requirement for all AIA trials
-Automatic stays of parallel litigation
-Adopting a clear and convincing standard for all AIA trials
Less radical changes that have been considered that may be proposed (ultimate passage into law is another question):
-*Limited 112 consideration in the case of means-plus-function terms
-Clarifying that 314(a) discretion does not reach parallel litigation considerations
-Outlaw of follow-on petitions from a same entity (practically speaking this is already outlawed as a matter of discretion at the PTAB)
-Clarification of estoppel provisions
-Clarifying and simplifying joinder
-Codifying change to Philips claim construction for AIA trials
It is not clear when (or if) we will see draft AIA legislation given the multitude of other more-pressing issues facing the Committee, but, my expectation is that we will see something within the coming year that tweaks the statutes along the lines suggested above. Perhaps, the bill we bill packaged along with other IP changes considered more pressing. Stay tuned.