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Historic Overhaul of the U.S. Patent System Enacted into Law
By Jeffrey Pepe and David Chen
DWC Law Firm, P.S.
October 3, 2011

After six years of debate on how to “modernize” U.S. patent law, the U.S. Senate finally passed the Leahy-Smith America Invents Act (AIA), which President Obama signed into law on September 16, 2011.  The AIA represents the most significant reform in the U.S. patent laws in almost 60 years.  Some aspects of the new law were effective immediately, while many of the major changes will take effect either one year or 18 months after enactment.

The most significant change is a switch from a “first-to-invent” system to a “first-inventor-to-file” system.  That is to say, a patent will no longer be awarded to the party who first conceived an invention, as occurs now, but instead will be awarded to the party who first files a patent application with the U.S. Patent and Trademark Office (USPTO).  This particular provision will not take effect until March 16, 2013 (i.e., 18 months after enactment), but the clear incentive for potential patentees will be to file patent applications sooner rather than later.

Other important changes in the law include:

• False Marking: On September 16, 2011, the new law essentially puts an end to the majority of pending or later false patent marking suits because only the U.S. government or a private party who can prove a competitive injury can now sue for false marking;
• Virtual Marking: Effective as of September 16, 2011 with a retroactive effect, virtual marking will be allowed by marking articles with the word “patent” or the abbreviation “pat.” along with a web address that lists all the relevant patent numbers.
• Post-Grant Review: Beginning on September 16, 2012, a new first window challenge will be available for any third party to petition for cancellation of any patent claim on any ground of invalidity for the first nine months after issuance of the patent.  This new procedure will be more litigation-like, including optional expert evidence, limited discovery, and oral hearings.  In essence, enforceability of an issued patent is delayed for nine months;
• Inter partes Review: Also beginning on September 16, 2012, a second window challenge, similar to and eventually replacing the currently existing inter partes reexamination challenge, provides a third party with the opportunity to cancel a patent claim based on prior art publications only and only after a post-grant review;
• Third Party Submissions: Beginning on September 16, 2012, a third party may anonymously submit any publication to the examination of a pending patent application, but it must include a concise description of its relevance;
• Prioritized Examination: On September 26, 2011, a patent application will be “fast-tracked” by the USPTO for a fee of $4,800 (reduced 50% for small entities) in addition to the usual filing fees.  Examination of a fast-tracked application should be completed within 12 months;
• Grace Period: Beginning on March 16, 2013, the one year grace period to file a patent application after pubic disclosure of an invention will be limited to disclosures by the inventor or those derived from the inventor; and
• Micro-Entity Status: On September 26, 2011, a new class of applicant exists that will be entitled to a 75% discount on patent fees.

The new law includes many additional changes, which range from minor (e.g., various reports required from the USPTO to Congress) to major modifications (e.g., creation of a Patent Trial and Appeal Board).  Additional information and a more complete summary of the new patent law can be found here. 

Please contact Jeffrey Pepe (jpepe@dwcattorney.com) or David Chen (david@dwcattorney.com) at DWC Law Firm, P.S., for more information or if you have specific questions.

Notice: This publication/newsletter is for informational purposes only and does not contain or convey legal advice.  In particular, the purpose of this publication/newsletter is to review the latest developments that are of interest to clients of DWC Law Firm PC.  The information herein should not be used or relied upon relating to any particular facts or circumstances, should not be construed as legal advice or opinion, and is not a substitute for the advice of counsel.