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On September 16, 2011, President Obama signed into law the America Invents Act, a major patent reform bill that is intended to encourage innovation, job creation and economic growth.
The America Invents Act represents one of the most significant changes to the Patent laws of the United States that has taken place over the last 25 years. The America Invents Act implements many modifications to the U.S. patent law system, the most important being the following:
First Inventor-to-File. U.S. patent law is amended so that it conforms to the "first inventor-to-file" system used almost everywhere else in the world. Under the current "first to invent system", the first party to invent is entitled to priority. Under the new "first inventor-to file system", the first inventor to file a patent application in the United States will be entitled to priority, whether or not that inventor invented first. THE FIRST TO FILE SYSTEM GOES INTO EFFECT IN 18 MONTHS.
One Year Grace Period Is Personal. As a consequence of the "first to file" rule, if a third party discloses an invention at any time before one's patent application is filed, then patent protection is precluded. THIS PROVISION GOES INTO EFFECT IN 18 MONTHS.
Pre-Issuance Submissions by Third Parties. Third parties are now permitted to submit information during the examination of a pending patent application and explain its relevance. These submissions must occur before the earlier of (1) the notice of allowance or (2) the later of six months after publication of the patent application or the date of the first rejection of the application by the Patent Office. THIS PROVISION GOES INTO EFFECT IN ONE YEAR.
Supplemental Examination Following Issuance. The procedures available to patent owners to correct issued patents have been significantly changed. These changes include a new supplemental examination procedure for patent owners seeking to have the Patent Office consider, reconsider, or correct information believed to be relevant to an issued patent. One purpose of this is to limit the inequitable conduct defense in litigation, as information considered during supplemental examination cannot be used in court in order to argue that the patent is not enforceable. THIS PROVISION GOES INTO EFFECT IN ONE YEAR.
Post-Grant Challenges. A new post-grant review procedure for third parties wishing to challenge an issued patent is now part of the patent laws of the United States. Such review, which is analogous to an opposition proceeding for trademarks, must be sought within 9 months after a patent issues or reissues. THE NEW POST-GRANT REVIEW PROCEDURES GO INTO EFFECT IN ONE YEAR.
False Marking. In order to control the recent outbreak of litigation on the issue of false patent marking, legal standing is limited to persons who have suffered "competitive injury" as a result of a false patent marking. THIS PROVISIONGOES INTO EFFECT IMMEDIATELY.
Virtual Marking. The patent marking process is simplified by allowing patent owners to update and revise a listing of applicable patents to an article without changing the patent marking designation on the article. In practice, a patent owner will be able to comply with the patent marking requirements by marking the article with "Patent" or "Pat" and an Internet address that reports the status of the patent. THIS PROVISION GOES INTO EFFECT IMMEDIATELY.
Advice of Counsel. The new law adopts the principles relating to willful infringement of patents that were previously set forth by the United States Court of Appeals for the Federal Circuit in In re Seagate, LLC, 497 F.3d 1360 (Fed. Cir. 2007) . Specifically, the failure of an infringer to obtain the advice of counsel or to present the advice of counsel if he or she has sought such advice may not be used to prove that the accused infringer willfully infringed a patent. THIS PROVISION GOES INTO EFFECT IN ONE YEAR.
Patentable Subject Matter. Human organisms and schemes to reduce, avoid, or defer tax liability cannot be protected. THIS PROVISION GOES INTO EFFECT IMMEDIATELY.
Best Mode Defense Eliminated. Although one is still required to disclose in a filed patent application the best mode for practicing an invention, the failure to do so is no longer a defense against patent validity in litigation. THIS PROVISION GOES INTO EFFECT IMMEDIATELY.
Fee Changes. The new law includes a $4800 fee for requesting expedited examination and the new micro entity status (Patent Office fees are reduced 75%) for income qualifying patent applicants. There is also a significant financial penalty for not filing electronically. And all patent fees are going up 15% before the end of the month.
The America Invents Act significantly changes United States patent practice; it affects many of the rules and procedures for obtaining a patent, maintaining a patent, enforcing a patent, and challenging another's patent. As we sift through the many complicated provisions of the Act, we encourage you to contact us so that we can answer your questions and help you navigate through the Act's many twists and turns. Going forward, the goal should be to define a business strategy that makes sense for you or for your client.
For further information, contact Jeffrey M. Kaden or Ted Weisz.
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