Working With Inventors Post-AIA: Managing Inventor Challenges And Preventing Common Mistakes

I. Introduction

The America Invents Act (AIA) was signed into law on September 16, 2011, and changed many provisions of the Patent Act that affect how lawyers and agents should work with their inventors. Many of these changes can present traps for prosecutors and surprises to inventors. This paper alerts practitioners to issues raised by the AIA that impact inventors and what inventors need to understand going forward, so that missteps can be avoided. For example, inventor disclosures and first-to-file practices greatly impact how inventors should conduct themselves relative to disclosures, competitors and research collaborators. This paper also gives recommendations for prosecutors regarding how to handle the day-to-day issues associated with inventor documents, such as oaths, declarations and assignments post-AIA.