On Sept. 16, the America Invents Act will have been in effect for five years. Passage of the patent reform legislation set off a mad dash to get in place implementing regulations—the rules of the road for inter partes- and covered business method-review, as well as the new “first-to-file” patent system. The Recorder checked in with McDermott Will & Emery partner Bernard Knight Jr., who served as the U.S. Patent and Trademark Office’s general counsel from 2010 to 2013 as the AIA went into effect, about the birthing of this momentous reform.
What were your first steps? First we had to get consensus among our stakeholders. The implementation would not go anywhere if … there was a lot of uproar from the user community. So [then-PTO director] Dave Kappos and [deputy director] Terry Rea held a bunch of meetings with constituent groups which I attended, and that included small inventors, university constituents. We had high tech. We met with pharma. It wasn’t just about post-grant proceedings. We also had the other key components, switching the U.S. patent system from a first-to-invent to a first-to-file system.
