America Invents Act enacted, overhauling United States patent system

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On Sept. 16, 2011, President Obama signed the America Invents Act (the Act) into law, enacting the first major overhaul of the United States patent system since 1952. The Act’s most substantial change is a transition from a first-to-invent priority system to a first-to-file priority system. This change has the potential to substantially affect inventors’ rights by awarding priority rights to an invention to the inventor who filed the first patent application. The Act moves the U.S. into closer alignment with the majority of other countries, which follow a first-to-file system.

The Act also includes provisions affecting other key areas of patent law, ranging from prosecution to litigation and everything in between. Among other things, those provisions include a new patent validity challenge mechanism, changes to the definition of prior art, the ability of a company to file an application on behalf of an employee-inventor, tax strategies, claims directed to human organisms, third party submissions during prosecution of an application and false patent marking litigation.

Due to the multitude of substantive changes to the U.S. patent system that the Act presents, it will likely be some time until the Patent Office, courts, practitioners and inventors fully appreciate the impact of the Act. To help understand the major changes, key dates and deadlines of the Act and the business and patent strategies affecting inventors and practitioners in response, SZD’s Intellectual Property Practice Group is hosting a Breakfast Exchange on Oct. 20, 2011.

For more information on the Act, please contact Roger Gilcrest at rgilcrest@szd.com or 614.462.1055 or any member of the SZD’s Intellectual Property Practice Group.

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