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America Invents Act

9/8/2011

On September 8, 2011, the United States Senate approved the House of Representative’s version of the “The America Invents Act,” House Bill H.R. 1249, by a margin of 89-9.   President Obama will sign the bill into law shortly.   This is the first major reform of the patent laws since the 1952 Patent Act. 

 

The provisions of the Bill include:

 

(1) First Inventor to File.  Under current law, patent eligibility is based on “first to invent.”  Changing to a “first inventor to file” system will place U.S. practice in harmony with the rest of the patent world.  The effective filing date of prior art U.S. patents and pre-grant applications claiming foreign priority will be the foreign filing date.  This provision will take effect 18 months after enactment. 

 

(2) Post-Grant Review Proceedings.  Under current law, there is no post grant review other than in reexamination proceedings, which are limited to issues of patentability relating to prior art patents or printed publications that establish a substantial new question of patentability.  The America Invents Act has significantly expanded options for post-grant review.   A petition for post-grant review may be based on almost any ground of invalidity, including the on-sale bar, enablement, indefiniteness, etc.  Petitions for post-grant review must be filed within nine months from the grant of a patent or reissue of a patent.   The petition for post-grant review will not be granted unless the information provided, if not rebutted, “would demonstrate that it is more likely than not” that at least one claim is unpatentable. This provision will take effect one year after enactment. 

 

    The Bill also provides for inter partes review based on prior art patents or publications.  A petition for inter partes review may be filed after the later of  (a) nine months from the grant of a patent, or (b) after the termination of a post-grant review discussed below.   The standard for granting inter partes review is that “there is a reasonable likelihood that petitioner would prevail” with respect to at least one claim. 

 

    (3) Pre-Issuance Submissions By Third Parties.  Under current US Patent and Trademark Office (USPTO) procedure, third party submissions of prior art patents and publications must be filed within two months of the date of publication of the application or prior to mailing of a notice of allowance, whichever is earlier.  The time period for third party submissions has been expanded.  A third party may submit any patent or publication of potential relevance to the examination of the application if the submission is made in writing before the earlier of a) the date the notice of allowance is mailed to applicant, or b) the later of six months after the date on which the application for patent is first published or the date of first rejection of any claim during the examination of an application.  This provision will take effect one year after enactment. 

 

    (4) Fee Setting Authority.   The Bill gives the Director authority to set or adjust fees to recover costs, and sets a 15% fee surcharge that will take effect ten days after enactment.  A fee of $4,800 has been set for prioritized examination (previously referred to by the USPTO as “Track I” examination).  This fee will take effect ten days after enactment. 

 

    (5) Supplemental Examination.  A patent owner may request supplemental examination of a patent to consider, reconsider or correct information believed to be relevant to the patent that could serve as the basis for a claim of inequitable conduct.   If a substantial new question of patentability is raised by one or more items in the request, the Director will order ex parte reexamination.  This provision will take effect one year after enactment. 

 

    (6) Best Mode Requirement.  The best mode requirement will remain a condition for patentability under 35 U.S.C. §112, first paragraph.  However, the best mode requirement shall not be a basis from which any claims for patenting may be canceled, held invalid or otherwise held to be  unenforceable.  This provision will take effect immediately upon enactment. 

 

 

 

For a full version of the House Bill text, please click  http://judiciary.house.gov/issues/issues_patentreformact2011.html

 

For the House’s announcement, please click  http://judiciary.house.gov/news/Patent%20Reform%20to%20President.html