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Wednesday, September 28, 2011

The Leahy-Smith America Invents Act: Innovation Issues

Wendy H. Schacht
Specialist in Science and Technology Policy

John R. Thomas
Visiting Scholar

Following several years of legislative discussion concerning patent reform, the Congress enacted P.L. 112-29, signed into law on September 16, 2011. The Leahy-Smith America Invents Act makes significant changes to the patent system, including: 
       First-Inventor-to-File Priority System. The America Invents Act shifts the U.S. patent priority rule from the current “first-to-invent” system to the “firstinventor- to-file principle” while allowing for a one-year grace period. 
       Prior User Rights. The legislation establishes an infringement defense based upon an accused infringer’s prior commercial use of an invention patented by another. 
       Assignee Filing. Under the America Invents Act, a patent application may be filed by the inventor’s employer or other entity to whom rights in the invention are assigned. 
       Post-Grant Review Proceedings. The America Invents Act changes the current system of administrative patent challenges at the U.S. Patent and Trademark Office (USPTO) by establishing post-grant review, inter partes review, and a transitional program for business method patents. 
       Public Participation in USPTO Procedures. The legislation allows members of the public to submit pertinent information to the USPTO concerning particular applications both before and after patent issuance. 
       USPTO Fees. The new law stipulates fees for USPTO patent services and allows the agency to adjust the fees in order to cover its costs. It also requires that fees collected above the amount provided for in the appropriations process be used only for the USPTO. 
       Patent Marking. The America Invents Act limits lawsuits challenging patent owners with false patent marking and allows for virtual, Internet-based marking. 
       Patentable Subject Matter. The America Invents Act prevents patents claiming or encompassing human organisms and limits the availability of patents claiming tax strategies. 
       Best Mode. The statute maintains the requirement that patents describe the best mode, or superior way for practicing the claimed invention, but eliminates failures to do so as a basis for invalidating the patent.
The America Invents Act introduces a number of additional changes to the patent law, including changes to the venue statute, the introduction of supplemental examination, and a clarification of the law of willful infringement.

Although the America Invents Act arguably makes the most significant changes to the U.S. patent statute since the 19th century, the legislation does not reflect all of the issues that were the subject of legislative discussion including the assessment of damages during infringement litigation and the publication of all pending patent applications prior to grant.

Date of Report: September 16, 2011
Number of Pages: 24
Order Number: R42014
Price: $29.95

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