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America Invents Act Signed by Obama

September 16, 2011

The key features of the Leahy-Smith America Invents Act (H.R. 1249) are summarized below. Note that the law is very detailed and technical, with a variety of exceptions and specific dates of implementation. The application of the following rules to any particular situation may vary. Likewise, the bill is unusually lengthy and therefore the summary below hits only the high points. In many cases the new provisions below do not take effect until a year after the law is signed.

First to File. After decades of debate, the law finally changes the U.S. patent priority system from one based on “first to invent” to one based on “first to file.” Prior to the new law, if two applicants sought patents for the same invention the patent would be awarded to the inventor who could prove to be the first to have invented it. Under the new law, the patent is awarded to the inventor who files the application first, regardless of whether another person invented it earlier. This change brings with it a modification in the way prior art is applied. Currently an inventor is allowed to “swear behind” certain prior art by establishing a date of invention earlier than the date of the prior art reference. Under the new version of the law, all publications and events occurring before the filing date is prior art. The sole exception is for the inventor’s own disclosures (or those derived from the inventor) that occurred less than one year from the filing date. This provision applies to applications filed eighteen months after enactment of the law.

Defense based on prior commercial use. Under prior law, it was a defense to a business method patent to assert prior use of the patented method. The new law extends this defense to all patents, such that proof that a patented method was in use before the filing date of the patent application will constitute a defense to a charge of infringement. This provision applies to any patent issued on or after the date of enactment of the law.

Reexamination. The law retains inter partes and ex parte reexamination procedures while adding mechanisms for preissuance submissions by third parties.

Fees. The USPTO is given authority to adjust its fees, and the result is that fees will go up. One fee increase takes effect quickly: within ten days of passage, the law imposes a 15 percent surcharge on most patent application fees. This rule takes effect within ten days of enactment.

Marking. Patent marking may be made “virtually” by providing a citation to a website on which patent information can be found. False marking litigation should substantially end as it is limited to complaints by those who can demonstrate a competitive injury as a result of the violation. No longer will lawyers be able to file a random lawsuit complaining about errors and other minor marking problems. This provision is effective upon enactment.

Advice of counsel. The failure of an infringer to obtain advice of counsel may not be used to prove that an accused infringer willfully infringed a patent. This applies in all lawsuits filed on or after the date of enactment.

Multiple defendant litigation. Plaintiffs will not be allowed to file a lawsuit against multiple unrelated defendants claiming patent infringement. Multiple defendants will only be allowed in a single lawsuit if they acted together to commit a common act of infringement.

Inventor declarations. New provisions make it easier for a company to file an application on its own behalf and to proceed with an application when the individual inventor is uncooperative or cannot be reached to sign the declaration.

Read the full text of the law here: http://www.govtrack.us/congress/billtext.xpd?bill=h112-1249

filed in: Intellectual Property

Attorneys

Lawrence D. Graham

Lawrence D. Graham

Our attorneys regularly produce substantive memoranda and news, addressing legal advancements in Trademarks, Intellectual Property, Patents and Litigation.

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