Long-Awaited Patent Reform Bill Passes Congress


Yesterday, the United States Senate passed the Leahy-Smith America Invents Act (the “Act”), previously passed by the House of Representatives, sending the most significant reform of the United States patent laws since 1952 to the President for his signature. President Obama has indicated his intention to sign it.

The sweeping legislation, among other things, converts the United States patent system to a “first-inventor-to-file” system, introduces new post-grant review procedures, and imposes an immediate 15% increase on patent office fees. A summary of the most important provisions follows.

Transitions to First Inventor to File: The Act amends sections 102 and 103 of the Patent Act, the provisions that define the concepts of novelty and obviousness, to transition the United States patent system to a “first-inventor-to-file” system similar to that used in much of the rest of the world. As a result, interference proceedings will eventually disappear, but will be replaced by derivation proceedings, in which the second inventor to file can challenge the first-filed application on the basis that the first inventor to file “derived” the invention from the second inventor to file. The changes, however, go substantially further than merely implementing the first-to-file rule. In addition to applicants no longer being able to “swear behind” the filing dates of earlier filed patent applications, applicants will no longer be able to swear behind any third party publications, unless the third party previously obtained the information from the applicant. In addition, earlier filed, yet-to-be published patents and patent applications owned by an entity will no longer be available as prior art against that entity’s later filed patents and applications. (Currently, such earlier filed patents and applications cannot be used to challenge the obviousness of a later filed patent or application, but can be used to challenge novelty.) These changes will not go into effect until 18 months after the enactment of the Act and will apply only to applications filed, and patents issuing from applications filed, after that date that do not claim priority to applications filed prior to that date.

Institutes New Post-Grant Review Procedures: The Act creates a new Post-Grant Review process and replaces the current Inter Partes Reexamination procedure with a new Inter Partes Review.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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