Patent Reform: 8 Things to Know About the America Invents Act

On September 8, 2011, the America Invents Act was overwhelmingly approved by the US Senate and sent to President Obama for his signature. From law firms on JD Supra, a preliminary look at eight things you need to know about this historic patent reform legislation:

1. [It] will change the U.S. patent system from a “first to invent” to a “first inventor to file” system. This is perhaps the most significant change in the legislation, because it increases the pressure to file an application as quickly as possible after conception and, if time permits, actual reduction to practice. (McDonnell Boehnen Hulbert & Berghoff LLP)

2. These [first-to-file] changes will not go into effect until 18 months after the enactment of the Act and will apply only to applications filed, and patents issuing from applications filed, after that date that do not claim priority to applications filed prior to that date. (Ropes & Gray LLP)

3. The Act has carved out two new categories of unpatentable inventions: No Patents for Tax Strategies … [and] No Patents Covering Human Organisms. (Bryan Cave)

4. It limits the requirements for standing to bring false marking actions to the U. S. government and private parties who can show competitive injury and changes marking requirements by allowing virtual marking of patented articles. (Fox Rothschild)

5. The Act establishes a procedure allowing a challenger to file a petition for review of a patent within a brief window after its issuance… with petitions being decided within one year of a patent’s issuance. (Morgan Lewis)

6. The Act changes the venue for proceedings involving the PTO from the District of Columbia to the Eastern District of Virginia. (McDermott Will & Emery)

7. Upon enactment, all fees will increase by 15% 10 days after enactment, the USPTO could offer a new micro entity discount (75% discount) for certain fees, and Track I prioritized examination will be available for $4,800. (Finnegan)

8. [It] requires the Director of the USPTO to establish an 8-year transitional program to review certain covered business-method patents in light of the Supreme Court’s recent decision in Bilski v. Kappos. (Bracewell & Giuliani LLP)


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