An Overview of the Key Substantive Changes Implemented by the Recently Enacted Amendments to the Leahy-Smith America Invents Act and Title 35

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On January 14, 2013, H.R. 6621, entitled “An Act to correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code,” was signed into law. H.R. 6621 not only corrects clerical errors but also contains substantive changes to patent law, which may be of interest to patent applicants or patentees. A brief summary of the key substantive changes is outlined below.

Elimination of “Dead Zones” for First-to-Invent and Reissue Patents -

H.R. 6621 eliminates the 9-month “dead zones” from the issue/reissue date during which one was precluded from petitioning for inter partes review of first-to-invent and reissue patents. Accordingly, any first-to-invent or reissue patent can now be challenged via inter partes review upon issuance.

Revised deadline for submission of oath or declaration -

Furthermore, H.R. 6621 amends 35 U.S.C. § 115(f) to extend the deadline for submission of the oath or declaration to “no later than the date on which the issue fee for the patent is paid” rather than requiring submission of these materials as prerequisite for issuing the notice of allowance. Despite this extended deadline, applicants may want to consider submitting the oath or declaration well in advance of issue fee payment to avoid potential problems.

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