America Invents Act A Reality

Posted on November 2, 2011

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In a previous blog, we discussed the scrutiny the United States patent system has been under by Congress in recent months. On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (“America Invents Act”) and put in place significant new provisions for inventors that will supposedly provide American inventors with a competitive edge in the international market.

According to the law, “the first to file provision” will go into effect in March of 2013. First to file allows that patent rights will be granted to the first patent applicant, whether that applicant is the inventor or not. The new law also eliminates the one-year grace period for “sales, offers to sell, or public use of the invention.”  According to the America Invents Act, the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not used as prior art as long as they occurred within 12 months of the filing date of a patent application relating to the invention. However, there is no grace period relative to third party, independently created disclosures.

The new law also eliminates false marking litigation, which occurs when an individual or company who does not have patent rights to an idea or product, claims to have the rights anyway. Under the America Invents Act, false marking suits can only be filed if there is concrete evidence that economic harm has occurred to the patent holder.  Furthermore, prior commercial use defense has now been expanded to cover patentable materials beyond business methods, which widens the scope of intellectual property that can be patented.  Lastly, the law increases and expands a number of fees in the Patent and Trademark office, including expedition fees for patent applications.

There has been a considerable amount of criticism of the recently-passed law, namely because adversaries claim it caters towards specific interest groups who benefit from the changes. For instance, while the first to file rule seems like it would create huge advantages for all inventors, some argue that the new stipulations will make it harder for small inventors to file patent applications and easier for corporations who have the means to afford legal advice to file applications more quickly. Detractors argue that overall, this new and improved patent system may not actually deliver the reform it promised.

It remains to be seen what effect the America Invents Act will actually have on the U.S. patent law system.   Inventors should be aware of the new law and should contact their intellectual property attorneys with regard to the law and its potential consequences.

Elizabeth Ritter
Ritter Law Firm, LLC

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