September, 2011

Overview of H.R. 1249

“Leahy-Smith America Invents Act”

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General

• “It is the sense of the Congress that converting the United States patent system from ‘first to invent’ to a system of ‘first inventor to file’ will . . . promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries.”

• Enactment expected September 16, 2011

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Change from “first to invent” to mostly a “first to file” regime

• Change: Prior art is determined by “effective filing date” not “date of invention”

No longer able to “swear behind” a reference (with a date less than one year prior to effective filing date) by alleging prior conception/reduction to practice

• Exceptions to “first to file”: Not prior art if reference is inventor’s or joint inventor’s own art, or

derived from inventor either directly or indirectly (and less than one year prior)

Not prior art if reference is owned by same entity or subject to obligation to assign to same entity (and less than one year prior)

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Change from “first to invent” to mostly a “first to file” regime (con’t)

• Change: “public use” is a bar to patentability when it occurs anywhere in the world (old law: U.S. public use only)

• 35 U.S.C. § 102(e), now new § 102(a)(2) and § 102(d)(2)Prior art date for prior patents and applications now

includes foreign priority date (not just domestic priority date)

• Effective Date: 18 months after enactment. Applies to applications with effective filing dates on or after Effective Date.

Currently pending and applications with an effective filing date prior to the Effective Date are subject to first to invent

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Interferences v. Derivation Proceedings

• Interferences will no longer be relevant, because priority is

determined by effective filing date (not date of conception)

• New: Derivation Proceedings (alleging application is derived

from another) will be handled by the re-named Patent Trial

and Appeal Board

• Effective Date: 18 months after enactment. Applies to

applications with effective filing dates on or after Effective

Date.

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New: Post Grant Review

• Provides for third party to petition for post-grant review within 9 months of patent issuanceStandard for granting petition: “more likely than not at

least one of the claims challenged is unpatentable”Cannot be filed if civil action challenging validity has

already been filed by same partyPatentee is allowed one motion to amend or cancel any

challenged patent claim

• Effective Date: one year after enactment (for certain business method patents), and all patents with an effective filing date 18 months on or after enactment

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Changes to Inter partes Review (formerly Inter partes Reexamination) Petitions

• May only be filed on the basis of novelty or obviousness, and the references must be printed publications or patents Can be filed only after later of: 9 months after issuance or

any post grant review has been terminated.

• Standard for granting petition is “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged”, a change from “raising a substantial new question of patentability”

• May not be filed if a civil action challenging validity is filed by petitioner prior to petition

• Effective Date: one year after enactment and applicable to all patents issued on, before or after Effective Date

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Third party submissions of art

• For a patent: any person at any time may cite in writing to USPTO prior art which consists of patents or printed publications which person believes has a bearing on patentability Will become part of official file of patent

• For a patent application: may submit prior art for examiner consideration prior to earlier of: notice of allowance, six (formerly 2) months after publication, and date of first rejection

• Effective Date: one year after date of enactment and applicable to any patent application/patent filed on, before or after the Effective Date

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Miscellaneous

• If inventor (employee) is under obligation to assign to the invention and refuses to cooperate, employer may file on behalf of inventor Minimizes “uncooperative inventor” problems Effective date: One year after date of enactment

• “Prior user defense” to patent infringement expandedPrior secret commercial use of more than one year prior

to effective filing date of patent as “trade secret” is a defense to patent infringement

Effective date: any patent issued on or after date of enactment

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Miscellaneous (con’t)

• “False marking” liability curtailedMarking with expired patent no longer a violationStanding to sue limited to those with “competitive

injury” Effective date: on and after date of enactment

• “Best Mode” requirement no longer basis for invalidityBest mode still required by 35 U.S.C. § 112Law amends 35 U.S.C. § 282 so that failure to

disclose best mode not a basis for invalidityEffective date: on or after date of enactment

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Miscellaneous (con’t)

• Immediate 15% fee increase across the board Effective date: 10 days after date of enactment

• Adds “otherwise available to the public” to list of prior art (includes patents, printed publications, or in public use or on sale).

• Follow up questions: msmith@sbiplaw.com

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