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President Obama Signs “America Invents Act” into Law
- 9/16/2011

On September 16, 2011, President Obama signed into law the “America Invents Act,” which implements changes in the U.S. patent law that have been in place for almost 60 years.  Many of the provisions that have significantly changed U.S. patent law will not take place for a year or more, although some provisions took effect immediately upon the act becoming law, or will take place within a matter of weeks.

Below are some highlights to the new law.

Patent Office Fee Schedule
The Patent Office has published a revised fee schedule that is effective as of September 26, 2011.  Many, although not all, patent office fees have increased by approximately 15%. 

Patent Prosecution
First-to-File. The new patent law will change the U.S. from a first-to-invent jurisdiction to a first-to-file jurisdiction, effective after eighteen months.  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 a patent application.

Restriction of Inventions Directed to Tax Benefit.  Under the new law, effective immediately, inventive strategies for “reducing, avoiding, or deferring tax liability” shall be unpatentable.

Derivation Proceedings.  Effective after eighteen months, an applicant for patent may file a petition to institute a derivation proceeding in the Office in an effort to prove that “an inventor named in an earlier application derived the claimed invention” from the inventor bringing the proceeding.

Third Party Submissions.  Effective after one year, third parties may submit to the Patent Examiner prior art references prior to a first Office Action that rejects the application. 

Post-Grant Review (Chapter 32).  Effective after one year, parties may institute post-grant review proceedings in an effort to invalidate a patent.  The proceeding must be brought within nine months of the patent’s grant date, and is only applicable for patents having a filing date of at least one year from enactment.

Inter Partes Review (Chapter 31).  Inter partes review proceedings are limited to determinations of novelty and non-obviousness under the Patent Act (35 U.S.C. §§102 and 103), and then only on the basis of patents or printed publications.  This review process limited to patents that have a grant date of greater than nine months from a petition for inter partes review or following a chapter 32 post-grant review proceeding.

Changes re: False Marking.  Among changes in patent marking, the new law states that “a person who has suffered a competitive injury as a result of a violation of [the false marking] section may file a civil action.”  This provision, effective immediately, is tailored to reduce the number of lawsuits brought that allege false patent marking.

Best Mode. Effective immediately, a patent application that does not disclose the best mode will not be a basis for invalidating a patent or rendering a patent unenforceable.  This provision, however, is not retroactive and is effective only going forward.

Please contact Ostrolenk Faber LLP for answers to any specific (or general) questions regarding the new patent law.  We will be updating our Internet web site and Facebook pages with additional details and analyses of the new patent law in the coming days and weeks.