Implications of the America Invents Act for R&D Managers: Connecting the Patent Life Cycle with the Technology Development Process

Abstract

OVERVIEW:Protecting intellectual property is crucial for R&D managers. The Leahy-Smith America Invents Act (AIA), which overhauled the US patent system in order to reduce litigation and bring US patent practices into line with international systems, offers new opportunities and challenges in this arena. AIA focuses on improving efficiency, increasing transparency, and harmonizing with other national patent regimes. In pursuit of these aims, the law introduced several key changes: eliminating the requirement for “best mode” disclosure, expanding the definition of prior art, moving from first-to-invent to first-to-file as the key criteria for patent eligibility, and adding post-grant review, among others. Using two familiar frameworks, the patent life cycle and the Stage-Gate model for new product development, the paper explores how AIA impacts R&D managers' considerations around intellectual property. The law comes with added risks for R&D managers, who now must evaluate the commercial potential of innovation much earlier (with a larger set of stakeholders), while maintaining more secrecy than was required under the old regime. The demands of AIA require that R&D managers become more important members of the enterprise's strategic team.