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Senate Passes "The America Invents Act"
- 9/9/2011

On September 8, 2011, the U.S. Senate voted 89-9 to pass HR 1249, the House of Representatives’ version of a patent reform bill known as “The America Invents Act.”  President Obama has indicated that he will sign the bill into law.

Three amendments were proposed in the Senate and defeated.  One amendment would have struck down a provision regarding the calculation of the 60-day period for application of patent term extension (referred to as the “MedCo” amendment).  Another defeated amendment was proposed to replace the bill’s transitional program for certain business-method patents.  The closest vote regarded a proposed amendment to restore the Senate’s previous provision regarding Patent Office funding, which was also defeated.  If any amendment had passed in the Senate, the bill would have returned to the House of Representatives for additional debate and voting.  By defeating the three proposed amendments, and passing a bill identical to the House version, HR1249, the bill is cleared for the President’s signature.

One key feature of the America Invents Act amends the 1952 Patent Act to change U.S. law from “first to invent” to a “first to file” system.  Under the new law, any inventorship dispute between two competing inventors (who have not derived their inventions from others) will be resolved by determining the first to file an application.  Previously and under the “first to invent” system, the first inventor to conceive of the invention would be awarded the patent, provided the inventor can prove diligence in reducing the invention to practice.  Under the new law diligence is no longer recognized, which may create an urgency to file patent applications.

Click Here for an Ostrolenk Faber article regarding the House vote on the bill.

Click Here for an Ostrolenk Faber article regarding the previous Senate version of the bill.

Click Here for a copy of the Senate Approved Version of America Invents Act.