U.S. Patent Reform Bill Very Near Enactment

After the U.S. Senate passed the Leahy-Smith America Invents Act (H.R. 1249) on September 8th, President Obama is expected to sign the bill into law within a few days. The new patent law will include a variety of far reaching changes, notably the transitioning the patent system of the U.S. 18 months after enactment from its unique “first-to-invent” system to a “first-inventor-to-file” system generally consistent with the patent systems of other industrial countries around the world. New prior art and “grace period” definitions will also become effective 18 months after enactment. 

In addition, the new law will provide pre-grant and post-grant procedures which can be employed by both patent owners and third parties. These procedures include a “Post-Grant Review” that may be filed by a third party up to 12 months after a patent grants and is similar to “opposition proceedings” at the European Patent Office; and an “Inter Partes Review” similar to the present Inter Partes Reexamination, both to be conducted by a newly formed Patent Trial and Appeal Board. Another procedure available to patent owners will be a “Supplemental Examination” that allows for consideration of information by the USPTO after grant with the possibility of limiting attacks based on inequitable conduct. Third Parties will have the option of filing “Preissuance Submissions” that identify relevant prior art before a patent application is allowed. All of these procedures become effective one year after enactment.

Other substantive changes include expansion of “prior user rights” under 35 USC 273 to include all technologies; elimination of the “best mode” with respect to validity and infringement defenses by third parties; and codification of the Knorr Bremse decision which prohibits a patent owner from proving willful infringement based on evidence that the infringer did not seek advice of counsel. Changes in the area of patent marking will also take place, including new limitations on “false marking” actions, and allowance of “virtual marking” in which the public is directed to an updated website which identifies relevant patent information. Upon enactment or shortly thereafter, the USPTO will also have authority to raise most fees.

Our firm will provide a more in-depth analysis of this “sea change” in the U.S. patent law next week. We will also monitor the significant changes that will be made to the USPTO Rules which implement the new law.