Abstract
Our article epitomizes systems thinking not only to identify possible unintended consequences of the Leahy-Smith America Invents Act (AIA), but also to offer suggestions mitigating their impact. Employing two-loop, generic system archetypes, our intent is to help stakeholders in intellectual property (IP) understand some of the nuances influencing the patent lifecycle linked to AIA. Building on the lingua franca used in patent law, our article highlights four important changes: being the first-to-file for protection; eliminating best mode disclosure; expanding the definition of prior art; and expanding post-grant review. Armed with a better understanding of the system issues imbedded in the legislation, innovators and entrepreneurs can develop strategies to deal with the attendant issues. For example, the tragedy of the commons associated with first-to-file highlights the need to increase R&D resources; else, over time incremental innovation will inevitably dominate efforts to modify the patent portfolio. Overall, AIA represents a step forward in harmonizing the US with the rest of the world while it increases the transparency of the legal maze that remains patent law; however, the changes bring allocation issues, secrecy, and time pressure to the forefront of the conversation about new product development. Recognition of these impacts is relevant worldwide for anyone contemplating a US patent or any entity attempting to maintain a viable portfolio of intellectual property.
Highlights
We cannot solve our problems with the same thinking we used when we created them
While advising the entrepreneur heading a biotech start-up, we had to advocate for changing the patent attorney of record because it became apparent that the lack of expertise in the technology hindered the prosecution of the patent that became the foundation of the enterprise: thousands of precious investment dollars fell by the wayside
Over the last two decades, many have noted the need for innovators and entrepreneurs to develop a more nuanced view of issues related to intellectual property (IP) (Crawford, 2012; Drucker, 1998; Granstrand & Oskarsson, 1994)
Summary
This article informs the myriad stakeholders who are responsible for protecting intellectual property (IP): innovators, entrepreneurs, scientists, engineers, marketers and attorneys. We clarify four important changes to the US patent system as a consequence of the implementation of the Leahy-Smith American Invents Act (AIA): being first-to-file for protection; eliminating best mode disclosure; a more expansive view of prior art; and post-grant review. Understanding the implications of these changes will reduce stakeholder missteps that could jeopardize patent approval (for example, disclosing an invention publically before filing a patent application), and negatively impact the product portfolio of an enterprise, as well as its competiveness in the market ecosystem. The changes bring allocation issues, secrecy, and time pressure to the forefront of the conversation about new product development. Recognition of these impacts is relevant worldwide for anyone contemplating a US patent or any entity attempting to maintain a viable portfolio of intellectual property
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