September 29, 2011
By Erika Harmon Arner; M. Paul Barker; Michele C. Bosch; Adriana L. Burgy; Jason E. Stach; Mark D. Sweet; Anthony C. Tridico, Ph.D.
On Friday, September 16, 2011, President Obama signed the America Invents Act at a signing ceremony at Thomas Jefferson High School for Science and Technology in Alexandria, VA. The U.S. Senate voted on September 8, 2011, to reform U.S. patent laws by approving the Leahy-Smith America Invents Act, with identical provisions to H.R. 1249, which was approved by the House of Representatives on June 23, 2011.
The legislation passed by the House and Senate makes significant changes to the U.S. patent system, including conversion to a first-inventor-to-file system, introduction of enhanced post-grant review procedures conducted in the USPTO, and redefinition of the parameters of USPTO funding. The bill also addresses preissuance submissions by third parties; USPTO fee-setting authority; supplemental examination, which appears relevant to the issue of inequitable conduct; reissue, which also appears relevant to the issue of inequitable conduct; micro entity fees; false marking; tax strategy patents; elimination of the best mode defense (although the best mode requirement remains in 35 U.S.C. § 112); special post-grant review for business method patents; USPTO satellite offices; creation of a USPTO ombudsman; residency for Federal Circuit judges; and USPTO authority to prioritize examination.
Many provisions will not be effective for a substantial period of time following enactment of the legislation, and the USPTO will need to promulgate regulations implementing the legislation. A number of important changes will take effect upon enactment. Notably, the threshold for instituting inter partes reexamination will change. The new threshold requires a finding “that there is a reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged in the request.” Additionally, the Federal Circuit will serve as the only appeal route from ex parte reexamination decisions. The legislation also includes substantial changes to the false marking statute, which will apply to cases pending on the date of enactment, as well as cases filed on or after that date. 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. Patent challengers who file proceedings on or after the date of enactment may no longer rely on best mode as a defense to infringement. Also, on or after the date of enactment, patent holders may use virtual marking (through a website). When enacted, the legislation also makes immediate changes to patent applications directed to tax strategies and human organisms. The legislation also includes a change that will apply in certain instances to the method of calculating the due date for a patent term extension application based on FDA approval.
For the effective date of provisions in the Act, please click here.
To view the USPTO webpage dedicated to implementation information, please click here.
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An Act: To correct and improve certain provisions of the Leahy-Smith America
Invents Act and title 35, United States Code - H.R. 6621 - January 14, 2013 [PDF]
Leahy-Smith America Invents Act - Public Law 112–29 - September 16, 2011 [PDF]
Senate
H.R. 1249 Passed Senate - September 8, 2011 ("Leahy-Smith America Invents
Act") [PDF]
S. 23 Passed Senate - March 8, 2011 (“America Invents Act”) [PDF]
S. 23 Reported in Senate - February 3, 2011 [PDF]
S. 23 Introduced in Senate - January 25, 2011 [PDF]
House
H.R. 6621 Introduced in House - November 30, 2012 (To correct and improve
certain provisions of the Leahy-Smith America Invents Act and title
35, United States Code) [PDF]
H.R. 1249 Passed House - June 23, 2011 ("Leahy-Smith America Invents Act") [PDF]
H.R. 1249 Reported in House - June 1, 2011 [PDF]
House Report showing all the changes to existing statutes that
would result from the bill passing as is [PDF]
H.R. 1249 Introduced in House - March 30, 2011
House
Committee on the Judiciary Hearing: "Promoting Investment and Protecting Commerce Online: Legitimate Sites v. Parasites, Part II" - April 6, 2011
Statement of The Honorable John Morton, Director, U.S
Immigration and Customs Enforcement
Floyd Abrams, Senior Partner, Cahill Gordon & Reindel LLP
Kent Walker, Senior Vice President and General Counsel,
Google Inc.
Statement of Christine N. Jones, Executive Vice-President, General
Counsel, & Corporate Secretary, The Go Daddy Group, Inc.
Committee on the Judiciary Hearing: "America Invents Act" - March 30, 2011
Statement of The Honorable David J. Kappos, Under Secretary of
Commerce for Intellectual Property and Director of the United
States Patent and Trademark Office
Statement of The Honorable Steve Bartlett, President and Chief
Executive Officer of the Financial Services Roundtable
Statement of Steven W. Miller, Vice President and General Council
for Intellectual Property, Proctor & Gamble Company
Statement of Mark Chandler, Vice President, General Counsel and
Secretary, Cisco Systems, Inc.
Statement of John Vaugh, Executive Vice President, Association of
American Universities
Committee on the Judiciary Hearing: "Promoting Investment and Protecting Commerce Online: Legitimate Sites v. Parasites, Part I" - March 14, 2011
Statement of Maria A. Pallante, Acting Register of Copyrights
Statement of David Sohn, Senior Policy Counsel, Center for
Democracy & Technology
Daniel Castro, Senior Analyst Information Technology and
Innovation Foundation (ITIF)
Frederick Huntsberry, Chief Operating Officer, Paramount Pictures
Corporation
Committee on the Judiciary Hearing: Review of Recent Judicial Decisions on Patent Law - March 10, 2011
Statement of Dan L. Burk, Chancellor's Professor of Law, University of
California, Irvine
Statement On Behalf of the Business Software Alliance by Andrew J. Pincus,
Partner, Mayer Brown LLP
Statement of Dennis D. Crouch, Associate Professor of Law, University of
Missouri School of Law
Committee on the Judiciary Hearing: Driving American Innovation: Creating Jobs and Boosting our Economy – March 9, 2011
Statement of Anthony Atala, M.D., Director, Wake Forest Institute for Regenerative
Medicine and W.H. Boyce Professor and Chair, Department of Urology, Wake
Forest University School of Medicine
Michael S. Fulkerson, Ph.D., Chief Technology Officer, Rosetta Stone, Inc.
Scott Smith, Ph.D., Professor and Chair, Department of Mechanical Engineering
and Engineering Science, University of North Carolina at Charlotte
Committee on the Judiciary Hearing: Crossing the Finish Line on Patent Reform: What Can and Should Be Done? - February 11, 2011
Testimony of David Simon, Associate General Counsel, Intellectual
Property Policy, Intel Corporation
Statement of Carl Horton, Chairman Coalition for 21st Century Patent Reform
and Chief IP Counsel of General Electric
Statement of Judge Paul R. Michel (Ret.) former Chief Judge U.S. Court of
Appeals for the Federal Circuit
Committee on the Judiciary Hearing: How an Improved U.S. Patent and Trademark Office Can Create Jobs - January 25, 2011
Statement of David J. Kappos, Under Secretary of Commerce for Intellectual
Property and Director of the U.S. Patent and Trademark Office
Statement of Douglas K. Norman, President, Intellectual Property Owners
Association and General Patent Counsel for Eli Lilly and Company, Inc.
Statement of Robert J. Shapiro, Chairman, Sonecon, LLC; Senior Fellow of the
Georgetown University McDonough School of Business; and Former Under
Secretary of Commerce for Economic Affairs
Remarks by the President at Signing of the America Invents Act - September 16, 2011 [Website]
Statement from Press Secretary Jay Carney - September 13, 2011 [Website]
Statement from U.S. Senator Patrick Leahy - September 6, 2011 [Website]
Statements from USPTO Director David Kappos
September 16, 2011 [Website]
September 8, 2011 [Website]
June 23, 2011 [Website]
June 21, 2011 [Website]
Statements from U.S. Commerce Secretary Gary Locke
May 31, 2011
April 26, 2011 [Website]
Statements from House Judiciary Chairman Lamar Smith
April 14, 2011
March 30, 2011
Letter Requesting Debate on Constitutionality of H.R. 1249 - June 1, 2011
Press Release - Reps. Rohrabacher, Kaptur Lead Bipartisan Opposition to Patent Reform Bill - June 1, 2011
Press Release - House Judiciary Committee - Support for House Patent Reform Proposal Grows - June 1, 2011
Statement of the Senate Judiciary Committee about the America Invents Act - March 8, 2011
White Board: Austan Goolsbee, Chairman of the Council of Economic Advisers,
on Patent Reform [Video]
Press Release - USPTO - March 1, 2011 [Website]
Statement of Administration Policy - February 28, 2011
American Intellectual Property Law Association (AIPLA)
Letter to Speaker Boehner and Minority Leader Pelosi re: AIPLA supports Section 22 of H.R. 1249, the America Invents Act - June 9, 2011
Letter to Majority Leader Reid and Minority Leader McConnell re: Support for S. 23, The Patent Reform Act of 2011 - February 24, 2011
Patent Reform Legislation Chart (itemizing AIPLA's position on each section of S. 23)
Intellectual Property Owners Association (IPO)
Letter to the House re: The absence of a provision in H.J. Res. 79 that would allow the PTO to spend all of the user fees it collects - September 21, 2011
Letter to the House re: Full Funding for the U.S. Patent and Trademark Office - An Urgent Jobs Issue - June 8, 2011
Letter to the Senate re: Full 2011 Funding for the U.S. Patent and Trademark Office - An Urgent Jobs Issue - November 24, 2010
Letter to the House re: Full 2011 Funding for the U.S. Patent and Trademark Office - An Urgent Jobs Issue - November 24, 2010
Biotech Industry Organization (BIO)
House Judiciary Committee’s Patent Reform Bill is in Need of Reform, Says BIO
BIO Commends Launch of House Patent Reform Process
BIO Hails Senate Passage of America Invents Act
BIO Commends Senate Judiciary Committee Passage of Patent Reform Act of 2011
BIO Supports Patent Reform Act of 2011
S. 515: Patent Reform Act of 2009
Introduced in the Senate - March 3, 2009 [PDF]
Reported in the Senate - April 2, 2009 [PDF]
H.R. 1260: Patent Reform Act of 2009
Introduced in the House - March 3, 2009 [PDF]
H.R. 1908: Patent Reform Act of 2007
Introduced in the House - April 18, 2007 [PDF]
Reported in the House - September 4, 2007 [PDF]
Engrossed in House [Passed House] - September 7, 2007 [PDF]
Placed on Calendar Senate - September 11, 2007 [PDF]
H.R. 2795: Patent Reform Act of 2005
Introduced in the House - June 8, 2005 [PDF]
Joe Matal, A Guide to the Legislative History of the America Invents Act: Part I of II, 21 FED. CIR. BAR J. 435 (2012) [PDF]
Joe Matal, A Guide to the Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. BAR J. 539 (2012) [PDF]
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