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Wednesday, February 6, 2013

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, or “AIA,” made significant changes to the patent system, including:

  • First-Inventor-to-File Priority System. The AIA shifted the U.S. patent priority rule from a “first-to-invent” system to the “first-inventor-to-file principle” while allowing for a one-year grace period. 
  • Prior User Rights. The legislation established an infringement defense based upon an accused infringer’s prior commercial use of an invention patented by another. 
  • Assignee Filing. Under the AIA, a patent application may be filed by the inventor’s employer or other entity to which rights in the invention are assigned. 
  • Post-Grant Review Proceedings. The AIA changed 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 allowed members of the public to submit pertinent information to the USPTO concerning particular applications both before and after patent issuance. 
  • USPTO Fees. The AIA stipulated fees for USPTO patent services and allows the agency to adjust the fees in order to cover its costs. It also required that fees collected above the amount provided for in the appropriations process be used only for the USPTO. 
  • Patent Marking. The AIA limited lawsuits challenging patent owners with false patent marking and allowed for virtual, Internet-based marking. 
  • Patentable Subject Matter. The AIA prevented patents claiming or encompassing human organisms and limited the availability of patents claiming tax strategies. 
  • Best Mode. The statute maintained the requirement that patents describe the best mode, or superior way for practicing the claimed invention, but eliminated failures to do so as a basis for invalidating the patent. 

The AIA introduced a number of additional changes to the patent law, including changes to the venue and joinder statutes, the introduction of supplemental examination, and a clarification of the law of willful infringement.

Although the AIA arguably made the most significant changes to the U.S. patent statute since the 19
th century, the legislation did not reflect all of the issues that were the subject of congressional discussion including the assessment of damages during infringement litigation and the publication of all pending patent applications prior to grant.

Date of Report: January 15, 2013
Number of Pages: 24
Order Number: R42014
Price: $29.95

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