By now, virtually everyone who represents business clients has heard of the America Invents Act (AIA) and understands that it has changed the landscape for acquiring both utility and design patents in ways that many did not expect. Some may also know that patent assertion entities (PAE), and nonpracticing entities (NPE), (both also known as patent trolls) have changed the landscape for patent enforcement action by commencing a record number of infringement litigations. It is the purpose of this article to discuss the impact these two facts have on counsel's advice to business clients and best practices for clients operating commercial entities. Regardless of the business under consideration, these facts advocate for timely and accurate record-keeping, even if the client is not interested in pursuing a utility or design patent. And, if the client is interested in pursuing a patent, they highlight the importance of filing patent applications as early as possible.
Looking first at the circumstance where there is a potential for the client to file a utility or design patent, the first-to-file requirements of the AIA make the filing of a patent application a race to the patent office. The AIA essentially eliminated the familiar "first to invent" standard in the prior statute for granting patents and ushered in the "first to file" system.
