October 17, 2021

Volume XI, Number 290


October 15, 2021

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October 14, 2021

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Senate Passes Sweeping Patent Reform Legislation

The U. S. Senate passed sweeping legislation on September 8, 2011, designed to significantly overhaul the U.S. patent system. The Leahy-Smith America Invents Act ("Act") (HR 1249) makes numerous changes to the U.S. patent laws, most notably conforming U.S. patent law to the laws of most other countries by granting patent protection to the first person to file for patent protection rather than the first to invent, as it is now. Portions of the Act will take effect immediately, while others will become effective in 12 to 18 months. President Obama is expected to sign the bill into law promptly.

Other notable changes to the patent laws include:

  • Third parties are given the opportunity to challenge the Patent Office's decision to grant a patent.

  • Third parties may cite prior art to the Patent Office during prosecution of a patent application.

  • Strategies to reduce taxes are not patentable.

  • Only the government and those suffering a competitive injury will be allowed to sue for false patent marking.

  • Failure to obtain the advice of counsel cannot be used to prove willful infringement.

  • Creates a mechanism by which the Patent Office will reevaluate and possibly invalidate previously issued business method patents.

  • Eliminates the requirement that inventors describe the "best mode" of making and using the invention as a basis for challenging the validity of a patent.

  • Allows individual inventors or very small companies to file patent applications at significantly lower fees, allowing those small companies and inventors to afford filing a patent application where they might not otherwise be able to afford such an application.

Companies and individuals who already have patents or pending patent applications should review their current practices and bring them in-line with the new patent laws in order to maintain their competitive edge. Inventors should also file an application as soon as possible, and must take additional steps to avoid disclosure or commercialization of their inventions prior to filing a patent application or risk losing the right to seek patent protection.

©2021 von Briesen & Roper, s.cNational Law Review, Volume I, Number 253

About this Author

Thomas J. Kammerait, von Briesen Roper Law Firm, Milwaukee, Corporate, Estate and Tax Law Attorney

Tom Kammerait is a Shareholder and the Chair of the Business Succession Planning Section. Tom represents businesses on all aspects of their corporate and business needs including transactional matters, tax, general corporate, real estate, technology, and estate planning issues. Tom generates value by helping clients set priorities for enhancing the value of their businesses and identifying risk management strategies, on a tax-efficient basis. He is also a CPA, so his knowledge of accounting gives him a quick understanding of client financial matters, and a rapport with...

Daniel S. Welytok, von Briesen Roper Law Firm, Milwaukee, Corporate Law Attorney

Dan Welytok is a Shareholder in the Milwaukee office of von Briesen & Roper, s.c. Dan’s practice focuses on helping management achieve practical results in all aspects of business. He assists clients nationally and internationally with business development, tax issues, acquisitions and divestments, capital structuring, financing, corporate governance, information technology, licensing and distribution, regulatory and compliance issues, labor and employee benefits matters, and dispute resolution. Dan represents clients before the Internal Revenue Service, the...

Gottlieb John Marmet, Von Briesen Roper Law Firm, Milwaukee, Intellectual Property and Litigation Law Attorney

Gottlieb John Marmet is a Shareholder in the firm’s Litigation and Risk Management Practice Group. John is a registered patent attorney and focuses his practice on intellectual property law including trademark litigation; patent prosecution and litigation; opinions pertaining to patentability, infringement and validity; and, advising clients on freedom to operate issues. John also has significant experience in product liability, toxic tort litigation and risk management, utilizing his bachelor’s and master’s degrees in engineering. John has litigation experience...

Mark Foley, von Briesen Roper Law Firm, Milwaukee, Bankruptcy and Litigation Law Attorney

Mark F. Foley is a Shareholder at von Briesen & Roper, s.c. with more than 25 years experience meeting the complex business and legal needs of clients ranging from individual business owners to industry trade associations and Global 500 companies.

Mark has successfully tried cases before judges and juries in federal and state courts, represented debtors and creditors in bankruptcy courts throughout the United States, and arbitrated matters before AAA and NASD panels. He has directed and conducted the nationwide defense of recurring product...