The AIA at Ten-How Much Do the Pre-AIA Prior Art Rules Still Matter?

As the America Invents Act (AIA) turns 10, patent students across the country may ask: if the law is already a decade old, why am I spending so much time studying pre-AIA law? Though patents filed before the transition date will remain in force up through March 2033, a good 10+ years away, teachers may also be wondering which regime to emphasize and for how long the pre-AIA rules will be considered fundamental rather than footnote material.
We address these questions empirically by analyzing the effective dates of patents and patent applications currently being litigated or pursued. Our analysis resoundingly confirms that both regimes matter and that the pre-AIA prior art regime appears likely to continue to be relevant for much of the next decade. But how much it matters depends. Patent lawsuits overwhelmingly continue to feature pre-AIA patents – a surprising 90% of the patent litigations initiated in 2020 included a patent with an effective filing date before March 16, 2013. But the inverse is true of patent prosecution – at least 94% of applications currently pending before the USPTO in 2021, we estimate, are governed by the AIA prior art rules. In the paragraphs below, we explain our methods and approach and how pre- and post-AIA law are likely to both remain important for some time but why the distinction doesn’t necessarily matter in the vast majority of cases.

Colleen V. Chien, Janelle Barbier, and Obie Reynolds

Patently-O Patent Law Journal

October 2021

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