Patent Reform Is Imminent - House Passes Historic Patent Reform Bill


On June 23, 2011, in a strong show of bipartisan support, the House of Representatives passed House Bill H.R. 1249 (titled the "America Invents Act"). The Bill, which passed 304-117, now moves into conference committee where managers from both the House and the Senate will meet to reconcile a number of relatively minor differences in H.R. 1249 and the related Senate Bill S. 23 (which passed overwhelmingly in March). Now, all indications point towards the Bill becoming law. Senator Patrick J. Leahy (D-VT), the primary sponsor of S. 23, has called his colleagues to "come together and approve [the] bill once again, and send it to the President's desk to be signed into law." And if the Bill reaches the White House, President Obama has pledged to sign it. That signature would usher in the most comprehensive change to U.S. patent law since Congress passed the 1952 Patent Act over half-a-century ago.

If passed into law, the America Invents Act would transition the U.S. Patent system from a first-to-invent system to a first-inventor-to-file system. The first-inventor-to-file system would give inventorship priority to the first individual inventor to file a patent application for a particular invention. That system follows the procedures already in place in Europe but would contrast sharply with the U.S.'s current system, which gives priority to the first inventor in some circumstances even if that inventor is not the first to file an application with the USPTO. The legislation would also add a new nine-month window for post-grant review of patent validity and reform the existing inter partes reexamination process into a new inter partes review process. With both post-grant review and inter partes review, the burden of proof on the challenger would be to demonstrate that the claims are invalid by a preponderance of the evidence, and the challenger would be precluded from raising similar grounds in an action for infringement in Federal Court.

As passed by the House, the legislation includes the following provisions...

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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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