After several failed attempts to pass a patent reform act, the America Invents Act was signed into law by President Obama on September 16, 2011.  The America Invents Act represents the most significant change to U.S. Patent Law in nearly 60 years.  Some major provisions are summarized below.

EFFECTIVE IMMEDIATELY:

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• New "Micro-Entity" Status:  While the small entity 50% fee reduction will continue, newly defined "micro entities" are entitled to a 75% fee reduction.
• False Marking Suits Limited:  Only the U.S. Government or a private party who can show a competitive injury may file a false marking suit.  Marking with expired patent numbers is not false marking, and “virtual marking” with reference to an internet address listing patent numbers is permissible.  This applies to all pending and new cases.
• Limit to Joinder of Accused Infringers:  Defendants may only be joined if actions giving rise to suit are from the same transaction or occurrence relating to the same product or process, or if there are questions of fact common to all defendants.  This applies to suits filed after enactment.
• Prior User Rights: Defendants in litigation may be able to assert prior user rights in some circumstances for the commercial use of the subject matter of a patent in the U.S.  Applies to any patents issued on or after enactment.
• New Standard in Inter Partes Reexamination:  Standard for Inter Partes Reexamination changes from “substantial new question of patentability” to "a reasonable likelihood that the requestor will prevail." 

EFFECTIVE SEPTEMBER 26, 2011:

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• 15% Increase on Most Fees:  A 15% increase will be added to most patent related fees including filing fees, examination fees, and maintenance fees.
• Prioritized Examination:  Prioritized examination (“Track I”) allows for fee-based prioritized examination:  $4,800 Large Entity; $2,400 Small Entity.
  

EFFECTIVE SEPTEMBER 16, 2012:

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• Supplemental Examination:  Inequitable conduct may be cured.  Any substantial new questions of patentability resulting from the Supplemental Examination will lead to Reexamination.
• Inter Partes Review:  Inter Partes Review may be instituted after 9 months from grant of a patent or after a Post-Grant Review and would generally be completed within 1 year.  Only novelty and obviousness may be raised and only patents and printed publications may be considered.  Inter Partes Review will replace Inter Partes Reexamination.

Reexamination, Post-Grant Review, and Inter Partes Review Decisions May Only Be Appealed to the Federal Circuit.

EFFECTIVE MARCH 16, 2013:

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• First-to-File:  All applications having an earliest priority date of 18 months after enactment of the Act are subject to the first-to-file system instead of the current first-to-invent system.  Under the first-to-file system, patents are granted to the first inventor to file an application covering an invention.
• 1 Year Grace Period:  Applicant’s own disclosures made within 1 year before the effective filing date of Applicant's U.S. application are not prior art if the application is subject to the first-to-file system.
• Scope of Prior Art Expanded:  Prior art now includes all art having an effective date (including foreign filing dates) prior to the effective filing date of a U.S. application subject to the first-to-file system.
• Derivation Proceedings:  Applicant may use a Derivation Proceeding where Applicant can show that an inventor of an earlier filed application derived the invention from Applicant.  The allegedly derived patent must be subject to the first-to-file system. 
• Post-Grant Review:  Post-Grant Review may be instituted within 9 months from grant of a patent and would generally be completed within 1 year.  All grounds of invalidity may be considered.  While the regulations will be in place 1 year from enactment, Post-Grant Review is only applicable to patents subject to the first-to-file system.

If you have any questions about these provisions, or have any other questions regarding the America Invents Act, please contact us.

MAC PAS1138146.2-*-09/16/11 9:53 PM