1. The Leahy-Smith America Invents Act:
the controversy surrounding the most significant U.S. patent
system law reform since 1952
Amanda Sheldon | April 16, 2014

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The United States has had the same procedure for filing a patent since 1952. The Patent
Act of 1952 was based on a “first-to-invent” system, which meant that the first person to invent a
product got the patent. Recently, lawmakers identified issues with this system of first-to-invent
and agreed upon reform. The issue I will focus on is interference proceedings, which occurred
under the previous first-to-invent system when parties fought over who was the first person to
invent. An interference proceeding delayed the process of filing a patent and was one of the
reasons for reform. The Leahy-Smith America Invents Act (AIA), named after its lead sponsors
Senator Patrick Leahy (D-VT) and Representative Lamar Smith (R-TX), went into effect March
2013. The AIA reformed the previous Patent Act of 1952.
The nearly 300 page AIA drastically changed the procedures for filing a patent, so my
focus on the biggest change to the law from a “first-to-invent” system to a “first-to-file” system
is worthy of analysis. First, I will compare the old first-to-invent system with the new first-to-file
system and explain why lawmakers decided reform was necessary. Secondly, I will discuss the
argument of the supporters of this Act. Thirdly, I will cover the argument of the protestors of this
Act. Covering both sides of this issue allows me to convey the importance of the AIA while
discussing the controversy surrounding this major change. The new first-to-file system places a
hardship on entrepreneurs making it controversial. Lastly, I will analyze these two opposing
opinions and discuss how my research led me to support the reform. My research has allowed me
to identify some problems that may occur with the AIA in the future, so I will discuss possible
amendments to the AIA looking ahead. Even though the new first-to-file system may make it
harder for entrepreneurs to get their ideas off the ground, reform was necessary because it

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eliminated interference proceedings, streamlined the filing procedure, and made the process
faster by increasing Patent and Trademark Office revenue.
An interference proceeding is when two or more parties debate who had the priority
application. It is a result of multiple patents being filed for the same concept. Under old law,
filing an interference proceeding allowed someone who never filed for a patent to challenge the
inventorship of a patented product. It was difficult to tell when an idea was originally
conceptualized, which made it a challenge to determine who deserved this patent. This was one
the biggest attractions for reform, because now under AIA the first person to file gets the patent.
The original first-to-invent system was unique, as the United States was the only country
that utilized this plan in an effort to foster inventorship and entrepreneurship. The American
Dream mindset nurtured the idea of startup companies and coming up from nothing. The old
process protected one’s ideas from the moment of creation. However, moving away from the
original system aligned the U.S. with the process of other countries, streamlined the application
process, and cleared inventor ambiguity.
It was important to align our process with other countries’ systems for simplicity’s sake
in regards to trade and international sale. Previously, U.S. inventors faced the dilemma of
marketing an idea or advertising it domestically without having filed for a patent and then
someone overseas filed for it in their country. Once that happened, the original U.S. inventor
couldn’t file for an interference proceeding in the other country, so the U.S. inventor lost those
overseas sales. Now, under new AIA law, a U.S. inventor must be the first to file in order to
protect their intellectual property. The fact that their idea isn’t safe from conception prompts
them to file immediately, and thus also protects them overseas.

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The application process is improved with the argument of first-to-invent being
eliminated. Before the reform, the Patent and Trademark Office (PTO) was bogged down with
multiple applications that were too similar to warrant different patents. When the applications
were denied, the inventors would challenge with interference proceedings. Now, the first
application that warrants a new patent receives it based on the date filed. Also, the application
fee under AIA goes straight to the PTO. This increase in funds allows them to hire more
employees in order to process the applications in a timelier manner.
Although the new system is based on the date filed, there are two provisions that allow an
inventor to still challenge a patent. The difference is instead of filing an interference proceeding,
one would now request a PTO review. A 2012 Harvard Law Review article is a great resource as
it explains these options that are still available under new AIA law for inventors wishing to
challenge patents through legal means. The Harvard Law Review states: “For those looking to
avoid costly litigation, the Act provides two administrative alternatives for reviewing contested
patents through the PTO.”1
The first provision protects inventors who had their invention published, but had not yet
filed for a patent. This provision allows inventors to propose their idea to investors and begin
creating the product without worrying about these investors stealing their ideas. When
interference proceedings would occur under old law, inventors would debate who had the idea
first. Now, that idea must be published in order to be challenged. AIA has sections for these
published ideas called “prior art”. The prior art section does not allow new patents for products
that were “patented, described in a printed publication, or in public use, on sale, or otherwise
1 HarvardLawReview, pg. 2

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available to the public before the effective filing date of the claimed invention.”2 In addition,
challenging inventors also have a grace period to show their prior art before the new patent is
granted. So in practice, the new law recognizes previously published work as evidence of the
first creator, instead of just a claim of having the idea first. A challenging party can request their
prior art be reviewed by the PTO by requesting an inter partes review.
The second option available in order to challenge a patent is to request a post-grant
review within nine months after the patent approval. Anyone can request a post-grant review by
filing their reason for the request with the PTO. These two provisions allow some flexibility
when needed and are a good compromise with the switch to the first-to-file system.
In his article The America Invents Act is Better for Small Business, Chief Development
Officer at Compute Media and designer of the Patent Studio John Koenig shows his support for
the reform and discusses how the AIA is actually helping entrepreneurs. The article states, “the
America Invents Act distinctly improves U.S. patent law for small businesses by eliminating
some trouble spots, and bringing more certainty, simplicity and economy to the patent process,
all of which allow greater patent participation by small businesses.” Koenig explains how small
businesses can file for the patent, and then utilize the allotted one year grace period after filing to
find investors and produce their product while having their invention patent-protected. Koenig
also explains how entrepreneurs and small businesses are supported under the AIA because there
are filing discounts specifically for these start-up businesses. Finally, Koenig explains how the
new procedures set in place to challenge a patent instead of filing an interference proceeding
helps entrepreneurs because now attorney representation is not required. Since the AIA allows
2 Leahy-SmithAmerica Invents Act, sec. 3(b)(1),§102(a)(1), 125Stat.at 286.

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the PTO to review patent disputes, it keeps the parties surrounding the challenged patent out of
court.
The protestors of the AIA have the opposite opinion. They argue that the change to first-
to-file stunts the growth of small businesses and delays the appearance of new inventions in the
marketplace. They are concerned that entrepreneurs do not understand the patent filing process
well enough to get their invention off the ground. Protestors worry that small businesses lack the
money and manpower of larger companies, and fear that this difference in resources will allow
big business to grow while discouraging small business and competition. There are also
trepidations regarding the implications the AIA could have on how big businesses operate.
A 2011 Michigan Law Review against reform states that the AIA has the “potential to
jeopardize American innovation, job creation, and economic competitiveness.” 3 The article
claims that the provisions in place to challenge a patent are not strong enough if the challenger is
an entrepreneur challenging a patent filed by a large company. The fear is that an entrepreneur
would show the invention to a large company in order to seek investment, but the company
would turn around and file a patent. This article states that it is up to the challenger to prove why
the patent should not be granted, and entrepreneurs simply do not have the resources to challenge
bigger companies.
MIT graduate and Boston patent attorney Erik Heels is opposed to the AIA and was
quoted in the Worcester Business Journal as saying, “It’s [AIA] the worst change to patent law in
my lifetime.”4 Heels fears that startup companies will not be able to file patents as fast as large
3 Michigan LawReview, pg. 1
4 “Patent LawChage [sic] To ‘First toFile’ SystemPoses Hurdle For Entrepreneurs”

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companies can, and thinks this shortchanges inventorship in the United States. He feels this
imbalance is not justified by the advantages of the Act including speedier filing procedures and
increased PTO revenue.
Even though the protestors of the AIA state entrepreneurship hardship as the chief reason
for opposing the new law, some big businesses are also against reform. Consero is a company
that hosts event and coordinates information for bigger businesses. They published their 2013
survey of forty-nine “Chief IP Officers in the Pharmaceuticals, Biotechnology and Medical
Device Industries” and found that “fifty-nine percent say the America Invents Act has changed
their in-house approach to the patent process.” 5 The new procedure for filing a patent is a big
concern for the medical field.
Medical patents are so specific that protestors fear the pressure to file will cause patents
to be filed before the product is market-ready. Products deserving a patent in the medical field
such as new medications are highly competitive between pharmaceutical companies. It is a
concern that money lost in patent infringement cases and the increased business expenditures
accrued in order to be first-to-file could cause forecast a raise in prescription costs.
Large companies also worry that the new system of first-to-file will encourage their
competitors to file and receive a patent without having any intention of actually manufacturing
the product. Instead, their competitors focus on patent-ownership with the sole intention of
forcing other companies to then buy the patent from them, thus granting the original owner
royalties. This is known as “patent trolling.” Patent trolls also file claims of patent infringement
5 “Fifty-Nine Percent ofChief IP Officers Say America Invents Act Has ChangedIn-House Approach to Patent Process, Accordingto
New Consero Survey”

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in hopes that large companies will cut their losses and settle out of court to avoid losing more
revenue and to avoid bad press. Patent trolls are a serious problem causing big businesses major
money, and the problem could be heightened by the new filing system under the AIA.
While comparing the two sides of the argument and weighing the pros and cons, I found
that I see the need for reform. The concerns circling the AIA for entrepreneurs, worries for big
businesses, and the threat of patent trolling does not mean reform was not needed.
My research has illuminated possible holes in the AIA that can only be identified by
policymakers once the new law has been in practice for a while. A drastic overhaul of the law
such as the AIA is bound to eventually require amendments and additional provisions. Not every
possible flaw can be identified initially, and these holes will come to light as issues arise and
parties bring them forth in court. The biggest issue I see with the AIA is the increased risk of
patent trolls.
Policymakers are already hard at work to adjust the AIA and amendments have already
been proposed. One of these proposals is the Patent Quality Improvement Act. It expands upon
the AIA provisions to include “software or business method patent” 6 which makes it challenging
for trolls to apply for patents that they do not plan on manufacturing. New York Senator Charles
Schumer has been pushing for patent quality improvement. He said in a senate hearing, “A
patent reform bill that does not address patent quality is like treating the symptoms instead of the
disease.” 6
The Senior Vice President and General Counsel of Eli Lilly & Company Robert A.
Armitage touched upon the issue of patent quality in his 2011 letter to David Kappos, the
6 “Senate Patent Litigation ReformHearingCalls For More Deliberate Approach ThanHouse”

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Director of the PTO. This letter urged the PTO to change what needs to be submitted in order to
file a patent. Currently under the AIA a person filing for a patent has the “duty of disclosure”7
that includes disclosing as much about the product as possible. Armitage suggests that only
important information needed to grant the patent be disclosed.
Armitage argues that there are many “side effects” of “over disclosure” including patent
troll allegations and litigation, the time and resources spent in court over trivial lawsuits, the
burden this places on the PTO, and the resulting poor patent quality. Armitage pleads that the
PTO consider changing the requirements for what needs to be submitted in order to protect the
inventor applying.
These changes that Armitage is looking for have not yet been implemented by the PTO,
but they are good suggestions that could easily help cut down on the issue of poor patent quality.
Bettering the quality of patents would lessen unnecessary lawsuits. Changes like what Armitage
suggests could be in store in the future, as issues arise looking for a solution. These suggestions
are valuable coming from an industry-leader that is looking at easy solutions to large problems.
Looking ahead, I expect to see more Acts pass that focus on eliminating patent trolls.
Patent trolls are clearly an entity that is exploiting the system and should not benefit from any
legal loopholes. Other actions that are being discussed to ward off patent trolls involve changes
in the court proceedings when a patent troll files suit or threatens legal action hoping to receive a
settlement.
7 “Letter fromArmitage toThe Honorable DavidJ. Kappos,Under Sec'y of Commerce forIntellectual Prop.& Dir. ofthe U.S. Patent
& TrademarkOffice.”

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One option the courts are looking at is to make the patent troll company pay for the
defendant’s legal fees if the defendant wins the case. This provision might make patent trolls
wary of pursuing legal action if they know they will have to pay a substantially higher amount of
money than they could possibly get in a settlement.
Another option for the court is to require the parent company file the claim of
infringement. This protocol will prevent so-called “shell companies” from filing infringement
suits. A shell company is a fake company that doesn’t have any real assets or business
transactions, but is used in order to hide the true identities of the parent company. Shell
companies can be used to seem like a legitimate business and then be shut down without losing
profits and without disclosing the true owners or responsible parties.
Regardless of the concerns, the United States will learn what the AIA is lacking through
practice. The AIA will be a work in progress that will require revisions. The United States
Constitution was signed 227 years ago and the United States Supreme Court is still debating
what is constitutional and what is not today. U.S. law changes and adapts for good reason. This
is why reform was needed. There are going to be holes initially, but they will eventually be filled
and our patent system will strengthen in the process. The long-term benefits far outweigh the
short-term fears.
The concerns for entrepreneurs and big businesses are important issues that will require
eventual change to the AIA. However, the issues with the Patent Act of 1952 and the first-to-
invent system were eliminated by the enactment of the AIA. It is now easier to prove who the
true inventor of a product is and who is deserving of the patent. There are provisions set in place
to request the patent approval be reviewed without relying on legal proceedings. Entrepreneurs

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and startups get discounted filing rates. The new system is in line with other countries’ systems
and protects American inventions overseas. The prior art provision allows an inventor to
challenge a patent and permits one to show their supporting documentation without requiring an
attorney. The first-to-file system encourages entrepreneurs to take advantage of the one-year
grace period after they file for a patent to seek investors and start working on production. All of
these factors work together to streamline the patent process. Lastly, the filing fees go back into
the PTO, which increases their resources and allows them to handle the whole process in a
timelier matter.
My research has not led me to believe that the new system discourages entrepreneurs.
This claim seems to be stemming from fear of the possibility rather than actual evidence of harm.
I do not believe the new patent system of first-to-file gives big businesses an unfair advantage.
Big businesses have the time, money, and resources to file patents effortlessly, but entrepreneurs
can still advance with the proper planning.
First, entrepreneurs need to file and then take advantage of the grace period to further
develop their idea. Secondly, they need to be wary of whom they share their ideas with. Thirdly,
entrepreneurs need to publish their work so they can show it as prior art if need be. Lastly,
entrepreneurs should consider having investors sign a non-disclose statement that identifies the
true inventor of the product.
In conclusion, the Leahy-Smith America Invents Act is worthy of exploration as it is the
biggest patent law reform since 1952. It completely revamped the patent filing process that is
now based on a first-to-file system. Even though the new first-to-file system may make it harder
for entrepreneurs to get their ideas off the ground, reform was necessary because it eliminated

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interference proceedings, streamlined the filing procedure, and made the process faster by
increasing Patent and Trademark Office revenue.
Interference proceedings are now a thing of the past as they were eliminated with the
switch to a first-to-file system. Inventors can still challenge patents in situations that call for it by
filing with the PTO instead of seeking legal representation. There are two separate ways to file
for a patent to be reviewed and designated time frames for each request for review. The new
system also rids multiple applications for the same product as the patent is now granted to the
first person to file. Lastly, the increased revenue helps support the PTO, allowing them to
oversee the new review process.
Senators, attorneys, industry leaders, and entrepreneurs alike are split between supporting
and protesting the AIA. Some, like Chief Development Officer at Compute Media and designer
of the Patent Studio John Koenig, think the reform will actually help entrepreneurs in the long
run and even the playing field for them by giving them filing discounts and not requiring
attorney representation. Others, like Boston patent attorney Erik Heels, think the new system
under AIA is burying entrepreneurs. Another argument, like that of the Michigan Law Review, is
that the AIA is delaying creativity, invention, and eliminating competition.
I see the basis of the opposition, but it is too early in the Act’s life to see how these fears
will play out. Just like with many laws before it, the AIA will be tested and questioned in court.
Once issues arise and can show the result of real damage, policymakers can then act to fill in
these gaps of the AIA.

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The biggest threat I see the AIA posing of the increased risk of patent trolls is already
being address as lawmakers are working on a solution. Entrepreneurs can win under this new
system, but they need to do their research and plan in order to make the system work for them.
U.S. patent law and the protection of intellectual property is vital in order to foster
inventorship and credit deserving parties, but the change to a new system does not have to be
intimidating. Inventors themselves foster change, and should also embrace it. Learning how the
law works for them will increase entrepreneurship success under new patent law. As the great
inventor Benjamin Franklin said, “Without continual growth and progress, such words as
improvement, achievement, and success have no meaning.”8
8 “Out of the mouthof a statesmanandinventor, BenjaminFranklin's quotes”

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Works Cited
Armitage, Robert A. “Letter from Armitage to The Honorable David J. Kappos, Under Sec'y of
Commerce for Intellectual Prop. & Dir. of the U.S. Patent & Trademark Office.” 19 Sept.
19 2011. Web. 12 Mar. 2014. Retrieved from
http://www.uspto.gov/patents/law/comments/x_ac58-e_elililly_20110919.pdf
Bellis, Mary. “Out of the mouth of a statesman and inventor, Benjamin Franklin’s quotes.”
About.com Inventors Web. 2014. 25 Mar. 2014. Retrieved from
http://inventors.about.com/od/fstartinventors/a/Benjamin-Franklin-Quotes.htm
Dultra, Tony. “Senate Patent Litigation Reform Hearing Calls For More Deliberate Approach
Than House.” Patent, Trademark, & Copyright Law Daily Dec 2013. Web. 3 Mar. 2014.
Retrieved from http://www.bna.com/senate-patent-litigation-n17179880853/
Harvard Law Review. “Leahy-Smith America Invents Act Revises U.S. Patent Law Regime. —
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (to be
codified in scattered sections of 35 U.S.C.).” 125 Harv. L. Rev. 1290 2012. Web. 24 Feb.
2014. Retrieved from http://harvardlawreview.org/2012/03/leahy-smith-america-invents-
act-revises-u-s-patent-law-regime-ae-leahy-smith-america-invents-act-pub-l-no-112-29-
125-stat-284-2011-to-be-codified-in-scattered-sections-of-35-u-s-c/
Leahy-Smith America Invents Act, H.R. 1249, 112th Cong. § 112-29 (2011). Web. 7 Mar. 2014.
Retrieved from http://www.gpo.gov/fdsys/pkg/PLAW-112publ29/html/PLAW-
112publ29.htm
Micucci, Emily. “Patent Law Chage [sic] To ‘First To File’ System Poses Hurdle for
Entrepreneurs.” Worcester Business Journal Online 1 Apr. 2013. Web. 5 Mar. 2014.
Retrieved from
http://www.wbjournal.com/article/20130401/PRINTEDITION/303299986/patent-law-
chage-to-first-to-file-system-poses-hurdle-for-entrepreneurs
Pasetsky, Mark. “Fifty-Nine Percent of Chief IP Officers Say America Invents Act Has Changed
In-House Approach to Patent Process, According to New Consero Survey.” Consero
Group 7 Feb. 2014. Web. 3 Mar. 2014. Retrieved from http://consero.com/fifty-nine-
percent-chief-ip-officers-say-america-invents-act-changed-house-approach-patent-
process-according-new-consero-survey/

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Rantanen, Jason and Petherbridge, Lee. “Toward a System of Invention Registration: The Leahy-
Smith America Invents Act.” 110 Mich. L. Rev. First Impressions 24 (2011), Web. 7
Mar. 2014. Retrieved from
http://www.michiganlawreview.org/assets/fi/110/rantanenpetherbridge.pdf.
Annotated Bibliography
Armitage, Robert A. “Letter from Armitage to The Honorable David J. Kappos, Under Sec'y of
Commerce for Intellectual Prop. & Dir. of the U.S. Patent & Trademark Office.” 19 Sept.
19 2011. Web. 12 Mar. 2014. Retrieved from
http://www.uspto.gov/patents/law/comments/x_ac58-e_elililly_20110919.pdf
This publication is a letter from the Senior Vice President and General Counsel of Eli
Lilly & Company Robert A. Armitage to David J. Kappos, the Director of the Patent and
Trademark Office. Armitage’s letter proposes a replacement for37 C.F.R. § 1.56 together
with a rationale for its promulgation. This article is useful because it shows other options
available to streamline the patent process and outlines ways that lawsuits can be avoided
by changing the information the Patent and Trademark Office requires. I can use this
article to show the opinions of big businesses and how the AIA is effecting their
procedures.
Armitage, Robert A. “Understanding The America Invents Act and its Implications For
Patenting.” AIPLA Quarterly Journal Vol. 40, No. 1, Winter 2012. Web. 9 Mar. 2014.
Retrieved from http://www.uspto.gov/aia_implementation/armitage_pdf.pdf
This publication was written by Senior Vice President and General Counsel of Eli Lilly &
Company. It is an instructional manual of step-by-step instructions on how to patent
under new law. I will not use this as a major resource, but it is useful supplementary
information that will allow me to look up statements and verify facts.
Bellis, Mary. “Out of the mouth of a statesman and inventor, Benjamin Franklin’s quotes.”
About.com Inventors Web. 2014. 25 Mar. 2014. Retrieved from
http://inventors.about.com/od/fstartinventors/a/Benjamin-Franklin-Quotes.htm
This is a list of famous quotes by Benjamin Franklin compiled by About.com writer
Bellis. I want to incorporate a quote by an inventor regarding change, as the AIA is the
most drastic change to patent law in decades. This source will be useful only for a
supplementary quote to add to the context of the paper.
Brooks v. Dunlap and US Government 2012-1164. Web. 5 Mar. 2014. Retrieved from
http://patentlyo.com/media/docs/2012/12/12-1164.pdf
This is a U.S. Court of Appeals case in 2012 from the U.S. District Court for the
Northern District of California case No. 10-CV-4341. This case compares old patent law
where persons could bring suit for false marking and compares it to the new procedures
under the AIA. Now, under new law, false marking claims are restricted to only persons
who suffered injury by the false marking. This case is useful because it is one of the few
cases that have already come forth as a result of the reform. This could be a point of
discussion when illustrating if the Act improved the existing law. I could cite this case
when discussing what issues have arrived under the AIA.

16. Sheldon 15
Crouch, Dennis. “Federal Circuit Rejects Due Process Challenge to AIA on False Marking
Retroactivity.” Patentlyo 13 Dec. 2012. Web. 28 Feb. 2014. Retrieved from
http://patentlyo.com/patent/2012/12/federal-circuit-rejects-due-process-challenge-to-aia-
on-false-marking-retroactivity.html
This article was written by an Associate Professor of University of Missouri School of
Law. The article discusses the Brooks v. Dunlap and US Government case and
summarizes the outcome. This article is useful as it would help me form my opinion of
this case as it highlights the main issues. This article would be a good supplementary
resource for me to fully understand the Brooks case when discussing issues caused by the
AIA.
Dultra, Tony. “Kudos for PTO transparency, but lingering concerns noted during hearing on
AIA.” Bloomberg Law nd. Web. 5 Mar. 2014. Retrieved from
http://about.bloomberglaw.com/law-reports/kudos-for-pto-transparency/
This article was written by an Associate Professor of University of Missouri School of
Law. It discusses what occurs during the Senate hearings of the AIA. It also documents
the concerns of some members of the House of Representatives in regards to possible
AIA amendments. Technical Amendments are also discussed and details are given
regarding what those amendments would entail. This information is useful as it will help
me identify the different opinions regarding the AIA. This article has quotes of both
supporting and opposing representatives and senators. I could use this information to
shape the debate over the AIA. I could also use this information to describe possible
future amendments to the law.
Dultra, Tony. “Senate Patent Litigation Reform Hearing Calls For More Deliberate Approach
Than House.” Patent, Trademark, & Copyright Law Daily Dec 2013. Web. 3 Mar. 2014.
Retrieved from http://www.bna.com/senate-patent-litigation-n17179880853/
This article was written by an Associate Professor of University of Missouri School of
Law. It covers the Senate hearings regarding the difference in the proposed bills, the
debate on the House of Representatives provisions, and funding issues. This information
is useful when I’m researching what the major differences are between the new Act and
the Patent Act of 1952. I could also reference the quotes of senators and representatives
to explain the varying opinions and controversy surrounding the AIA. This article could
help me narrow my thesis.
Harvard Law Review. “Leahy-Smith America Invents Act Revises U.S. Patent Law Regime. —
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (to be
codified in scattered sections of 35 U.S.C.).” 125 Harv. L. Rev. 1290 2012. Web. 24 Feb.
2014. Retrieved from http://harvardlawreview.org/2012/03/leahy-smith-america-invents-
act-revises-u-s-patent-law-regime-ae-leahy-smith-america-invents-act-pub-l-no-112-29-
125-stat-284-2011-to-be-codified-in-scattered-sections-of-35-u-s-c/
This Harvard Law Review does not list a specific author. Although the article as a whole
is a critical opinion of the AIA, it provides some crucial information that discusses why
the law reform was needed. It also outlines and explains the provisions of the law,
especially in regards to interference proceedings. This reference is useful as it will help
me during my introduction when I explain the changes made by the reform. This article

17. Sheldon 16
will help me compare and contrast various aspects of the law before the change and after.
This article will also help me form my thesis and develop my viewpoint of the reform.
Koenig, John. “The America Invents Act is Better for Small Business.” Patent Studio 21 Sept.
2011. Web. 5 Mar. 2014. Retrieved from http://johnkoenig.com/the-america-invents-act-
is-better-for-small-business/
This article was written by the Chief Development Officer at Compute Media and
designer of the Patent Studio. The article describes how entrepreneurs can utilize the AIA
grace period and how they no longer need attorney representation. Both of these aspects
of AIA make it easier on entrepreneurs. The article also explains how entrepreneurs get
discounts on patent filing that level the playing field with big businesses. This
information will be useful when I’m citing business owners who favor the reform. I can
also use the points made in this article to support my thesis and show how the AIA
doesn’t hurt entrepreneurship.
Leahy-Smith America Invents Act, H.R. 1249, 112th Cong. § 112-29 (2011). Web. 7 Mar. 2014.
Retrieved from http://www.gpo.gov/fdsys/pkg/PLAW-112publ29/html/PLAW-
112publ29.htm
This source is the actual Act itself from the US Government Printing Office. It is 283
pages long and explains every provision of the law in detail. This source won’t be cited
as a major resource because it is more informational than to help develop ideas, but it is
supplementary to other resources so I can look up what the actual law says and compare
it to verify that my sources are accurate.
Micucci, Emily. “Patent Law Chage [sic] To ‘First To File’ System Poses Hurdle for
Entrepreneurs.” Worcester Business Journal Online 1 Apr. 2013. Web. 5 Mar. 2014.
Retrieved from
http://www.wbjournal.com/article/20130401/PRINTEDITION/303299986/patent-law-
chage-to-first-to-file-system-poses-hurdle-for-entrepreneurs
This article was written by a journalist for the Worcester Business Journal. It discusses
the difficulties for entrepreneurs that the AIA creates and the rush to file before the law
changed. It also explains a viewpoint of an attorney against the reform and lists his
reasoning. This article is useful when I’m explaining protestors of the Act and their
reasons for being against reform.
Pasetsky, Mark. “Fifty-Nine Percent of Chief IP Officers Say America Invents Act Has Changed
In-House Approach to Patent Process, According to New Consero Survey.” Consero
Group 7 Feb. 2014. Web. 3 Mar. 2014. Retrieved from http://consero.com/fifty-nine-
percent-chief-ip-officers-say-america-invents-act-changed-house-approach-patent-
process-according-new-consero-survey/
This article was written by a representative of Consero, an industry-specific event and
information coordinating company. It is a survey of forty-nine Fortune 100 Chief IP
Officers and discusses how fifty-nine percent of those surveyed said the AIA changed
their business procedures. This information will be useful when I explain how even bug
businesses protest the reform. This information will make for an interesting perspective
to discuss how new law effects day-to-day of successful businesses and doesn’t
necessarily give them an advantage.

18. Sheldon 17
Rantanen, Jason and Petherbridge, Lee. “Toward a System of Invention Registration: The Leahy-
Smith America Invents Act.” 110 Mich. L. Rev. First Impressions 24 (2011), Web. 7
Mar. 2014. Retrieved from
http://www.michiganlawreview.org/assets/fi/110/rantanenpetherbridge.pdf.
This article was written by Rantanen, an Associate Professor of University of Iowa
College of Law and Petherbridge, a Professor of Law of Loyola Law School Los
Angeles. This article discusses Patent Amnesty and how the AIA allows the patent
application to request additional information in order to have their claim complete and
approved. The article explains how this process is an effort to eliminate patents being
denied due to clerical errors. This information will be useful if I decide to discuss Patent
Amnesty as one of the issues the AIA was intended to fix.
Schoenhard, Paul M. “Gaps, Conflicts, and Ambiguities in the Federal Courts’ Post-AIA Patent
Jurisdiction.” Intellectual Property & Technology Law Journal July 2013. Web. 17 Feb.
2014. Retrieved from
http://www.ropesgray.com/~/media/Files/articles/2013/06/Schoenhard-article-IPTLJ-Jul-
%202013.ashx
This law journal article was written by an attorney in Washington, D.C. who is also an
Adjunct Associate Professor at the American University of Washington College of Law.
This article examines issues with jurisdiction before and after the law. It explains
problems that the courts may face post-AIA when determining what court hears the cases.
This resource could be useful if I decide to cover jurisdictional issues created by the AIA.
US Code Title 35. Appendix L Consolidated Patent Laws Web. 3 Mar. 2014. Retrieved from
http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf
This is the actual US Code from the US Government Printing Office. It is 105 pages and
is a manual covering all directions and rules for filing a patent. It incorporates the
changes made by AIA and has a helpful direct side-by-side comparison of the differences
between new and old law. This can be used to demonstrate issues that were fixed with
new law and could help me identify how the law affects various parties.
USPTO.gov website last updated 21 Mar 2014. 3 Mar. 2014. Retrieved from
http://www.uspto.gov/aia_implementation/
This source is the official US Patent & Trademark Office government website. It has
informational charts that I could use in my presentation and figures demonstrating why
reform was needed. This website also has a plethora of information on trademark law
from a credible source. I could also use this information when researching parties that
support the reform.