Senate Passes the America Invents Act
This evening, the U.S. Senate passed the Leahy-Smith America Invents Act, H.R. 1249 (the "Act"). The Act includes the provisions impacting fees, Patent and Trademark Office ("PTO") proceedings and litigation proceedings that will take effect upon or shortly following enactment. These provisions include:
- a 15% surcharge on USPTO fees
- 75% fee reductions for the newly categorized micro entities
- a $400 fee for failing to file electronically
- a $4,800 fee for filing prioritized applications
- prior user defense in litigation with respect to patents issued on or after the date of enactment
- requirement that private false marking claims include proof of competitive injury
See H.R. 1249, 112 Cong. §§ 5, 10(a), 10(b), 10(g), 11(h), 16(b).
The Act also includes provisions that will not take effect for 12 to 18 months after the bill is signed into law, for example:
- A provision that changes the U.S. patent system from a "first to invent" system to a "first to file" system, similar to that used in Europe and most other countries. Currently, the United States operates under a "first to invent" system in which, in very broad terms, the person who is first to invent but last to file can still receive a patent for the subject invention. In addition, when faced with prior art, the applicant can prove with corroborating evidence that he or she invented the claimed subject matter before the effective date of the prior art (e.g., up to one year before prior art publications). Under the new system, the filing date will govern what does and does not qualify as prior art. This change will encourage early identification of inventions and early filing of patent applications. See id. § 3 (2011).
- A provision that provides new post-grant procedures for resolving patent issues and challenging a patent within 12 months of issue or re-issue of a patent. Id. § 6.
The PTO has established a "Leahy-Smith America Invents Act Implementation" page on its website that includes further information on the bill. We will provide you with a more in-depth summary of the bill in a Client Update once it has been signed into law. In the meantime, please contact us if you have any questions regarding the Act or how it may affect your IP strategy.
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