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U.S. Patent Reform in 2011: President Signs the America Invents Act

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act. This major piece of legislation moves the U.S. patent system closer in harmony with foreign patent laws, but at the same time significantly changes the manner in which patents are prosecuted and litigated in the United States. What follows is a summary of the key changes under the law and their effective dates.

First-to-File System

The most publicized change to the U.S. patent system is a replacement of the current "first-to-invent" system with a modified "first-to-file" system. The new system will take effect on March 16, 2013 (18 months from the signing of the America Invents Act). As the race to the Patent Office begins, inventors will need to keep in mind that priority of inventorship will be awarded to the first inventor to file a patent application—not the first inventor to conceive of the invention. Under the America Invents Act, inventors will no longer be permitted to predate a prior art reference in a patent application by attesting to the conception of the invention at an earlier date. However, the America Invents Act does retain some measure of a one-year grace period. The grace period will cover, for example, an inventor's disclosure of the invention or subject matter of the invention made within one year before filing a patent application. In addition, a disclosure made by a third party will not be considered prior art if the inventor publicly disclosed the invention before the other disclosure and filed the application within one year of the inventor's public disclosure.

Third-Party Submission and Comments

The America Invents Act allows third parties to submit any published patent application or printed publication against a pending patent application together with a concise statement of its relevancy to the patentability of the pending application. The submission must be made either before a notice of allowance is issued or up to (a) six months after publication of the application or (b) the date of the first rejection by the examiner (whichever is later). This applies to any application filed before, on or after the effective date of September 18, 2012 (i.e., one year after the signing of the America Invents Act).

Post-Grant Review Process

The America Invents Act will now permit a third party to request a new post-grant review within nine months of the issuance of the patent. Administrative judges will be appointed to the post-grant review proceeding. The post-grant review can be based on any ground for invalidity, including lack of enablement, lack of written description and prior art. The new process will permit the proceeding to be terminated or settled by the parties before a final decision is rendered. Requests for a post-grant review will be accepted by the Patent Office on or after September 16, 2012 and will only apply to patents issued under the new first-to-file system.

False Marking

The America Invents Act amends the false marking provisions of the current patent laws to only allow the U.S. government or private parties who have suffered a competitive injury to sue for false marking. The America Invents Act also provides that a marked product that was once covered by a patent but has since expired does not constitute false marking. This provision takes effect immediately, thus abolishing many false patent marking lawsuits.

Virtual Marking

The America Invents Act will now also permit Internet-based marking. In other words, products or packaging may now be labeled with the terms "Patent" or "Pat." together with a URL that points to a website providing the status of patents covering the product.

In addition to these key changes, the America Invents Act implements many more detailed modifications to the U.S. patent system. Future articles will discuss the impact of the above changes in greater depth and comment on additional aspects of the new patent legislation. 

© 2022 Much Shelist, P.C.National Law Review, Volume I, Number 297
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About this Author

Adam K. Sacharoff, Intellectual Property Lawyer, Technology Attorney, Much Shelist Law firm
Principal

Adam K. Sacharoff, Chair of the firm's Intellectual Property & Technology practice, counsels clients on patents, trademarks, and copyright matters, as well as a broad range of technology matters including sweepstakes, on-line privacy matters, and licensing.

Adam provides clients with a full range of patent-related legal services, including U.S. and international patent prosecution, patent opinions, pre-litigation counseling, ex parte and inter partes patent reexamination, due diligence of intellectual property assets, and patent licensing. He has filed and prosecuted hundreds of...

312-521-2775
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