FLC News

Patent Reform: The America Invents Act

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Patents are a frequent topic within the FLC as our community consists of inventors, researchers, and technology transfer professionals, all of whom deal with the patent process for their technologies. Recently, the U.S. Senate approved the Leahy-Smith America Invents Act (H.R. 1249), which was signed into law by President Obama on September 16, 2011. The Act will have a profound impact on how patents are obtained and enforced, and some of the changes will be retroactive, effective immediately, or in the future. The current Administration has announced several new steps in the Act that will help convert ideas from America’s universities and research labs into new products.

Legal, licensing, and technology transfer professionals should get up-to-speed on the Act’s new rules, as well as the implications on patent strategy and practice. Now is the time to focus on exactly what the Act says, what it means for your organization and its intellectual property portfolio, and what you must do to adapt to its provisions.

The main provisions of the Act implement a first-inventor-to-file standard for patent approval, create a post-grant review system to weed out bad patents, and help the U.S. Patent and Trademark Office (USPTO) address the backlog of patent applications.

The biggest change to the U.S. patent system is to move the patent process from a “first-to invent” to a “first-inventor-to file” system. This means that the inventor with the earliest-filed application will be entitled to claim the patent. This new procedure harmonizes the U.S. patent system with the rest of the world, with the goal of making it more efficient, predictable, and easier for entrepreneurs to simultaneously market products in the U.S. and abroad. The USPTO will also expand work-sharing with other patent offices around the world to increase efficiency and speed patent processing for applicants seeking protection in multiple jurisdictions. The new system goes into effect 18 months from 9/16/2011.

The first-inventor-to-file system will not trigger a race to file patent applications. The Act retains several provisions softening first-inventor-to-file requirements. Remaining is the one-year grace period for inventions disclosed by the inventor. As under the previous law, this allows sales of the invention or publication of scientific papers by inventors before filing a patent application. Provisional patent applications will also continue to be allowed. The Act will affect patent practitioners by eliminating their ability to prove that an invention was invented before other patents and publications cited during patent prosecution.

The USPTO has reengineered its quality management processes to increase the quality of the examinations, and has issued guidelines that clarify and tighten its standards for the issuance of patents. The legislation gives the USPTO additional tools and resources to further improve patent quality, and allows patent challenges to be resolved in-house through expedited post-grant processes.

Further, under the new Act, there is recourse available to inventors who are not the first-to-file, but who believe their invention was copied. Under certain criteria, if the inventor who was not the first-to-file can demonstrate copying of their invention, a derivation proceeding by the newly formed Patent Trial and Appeal Board will address this issue.

To learn more about the America Invents Act, visit http://www.whitehouse.gov/blog/2011/09/16/america-invents-act-turning-ideas-jobs.

FLC News