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Intellectual PropertyPatent LitigationThe Intellectual Property StrategistFeatures

Swearing Behind: Overcoming Asserted Prior Art in PTAB Proceedings, Part 2

By Emily J. Roberts, Ph.D. and Adam R. Brausa
May 31, 2025

Part Two of a Two-Part Article

Introduction


With the adoption of the America Invents Act (AIA) in 2011 and the accompanying change from a first-to-invent system to a first-to-file system, one might be tempted to conclude that first-to-invent concepts like prior conception and reasonable diligence are no longer relevant. But despite the passage of more than a decade since the enactment of the AIA, a significant number of patents with an effective filing date before March 16, 2013 remain in existence and will continue to be litigated under pre-AIA rules. See, Colleen V. Chien et al., “The AIA at Ten-How Much Do the Pre-AIA Prior Art Rules Still Matter?,” 35 Patently-O Patent Law Journal 1, 1 (2021) (reporting that approximately 90% of litigated patents fell under the pre-AIA system in 2020 versus 100% in 2013).

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