LEAHY-SMITH AMERICA INVENTS ACT
(2011 PATENT ACT)
On September 16, 2011, President Obama signed the “Leahy-Smith America Invents Act” into law. This legislation is the first significant change to the U.S. patent system since 1952. The most significant impacts of the Act include the following:
(1) A new Novelty provision that redefines that patents, publications and activities that can constitute prior art. For more discussion on the new novelty provisions, including a summary of the prior art legislation, please click here.
(2) The implementation of the First Inventor to File system. For more discussion on the transition from first to invent to first to file, please click here.
(3) Derivation Proceedings to determine whether the inventor(s) named in an application derived the claimed invention from another inventor. For more discussion on Derivation, please click here.
(4)Post-Grant Review Proceedings, similar to Opposition proceedings in other jurisdictions such as the European Patent Office, to invalidate a patent based on novelty, obviousness, or for failure to comply with the written description or enablement requirement. For more discussion on post-grant opposition proceedings, please click here.
(5) An Inter Partes Review, similar to the inter partes reexamination currently in practice, to invalidate patents based on prior art patents or publications. For more discussion on inter partes review, please click here.
(6) An expansion of time for Pre-Issuance Submissions by Third Parties. For more discussion on pre-issuance submissions, please click here.
(7) Creation of Supplemental Examination, to be requested by a patent owner, 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. For more discussion on supplemental examination, please click here.
(8) Changes that impact how Patent Infringement Litigation at the district court are conducted. For more discussion on how the legislation affects litigation, please click here.
(9) Changes to PTO Practices and the manner in which a patent application is prosecuted before the PTO. For more discussion on provisions of the legislation that affects US prosecution, please click here.
Links to Legislation and Congressional Testimony
Smith Manager's Amendment
Statement of Administration Policy
H.R. 1249 One-Page Bill Summary
H.R. 1249 One-Page Bill Summary - Constitutionality
H.R. 1249 One-Page Bill Summary - Job Creation
Comparison of Key Provisions of S. 23 and H.R. 1249