America Invents Act: A Patent Reform Primer For The Rest Of Us

The America Invents Act (full text copy) moved one step closer to law on Tuesday, and supporters expect the final bill to be on President Obama’s desk within the next couple of weeks.

What’s it all about? Here, culled from IP law firms on JD Supra, is a patent reform primer for the rest of us: 

1. Both versions of the legislation passed by the House and Senate make significant changes to the U.S. patent system, most notably including conversion to a first-inventor-to-file system… (Finnegan)

2. …the majority of other countries already follow a “first to file” patent system. Thus, shifting to a “first to file” system will bring the U.S. into conformity with those countries. (Armstrong Teasdale)

3. In competitive technology fields this move puts additional pressure on companies to quickly make critical patent strategy decisions about how to protect newly-conceived inventions. Among the most important are decisions about how best to balance the need for winning the race to the patent office with completing the work required in a patent specification. (Fenwick & West)

4. When the proposed legislation becomes law, an inventor or business owning an invention may be barred from obtaining a patent if the patent application is not filed before the invention is offered for sale, described in a printed publication, used publicly or otherwise available to the public. (King, Krebs & Jurgens)

5. The legislation would also add a new nine-month window for post-grant review of patent validity … the burden of proof on the challenger would be to demonstrate that the claims are invalid by a preponderance of the evidence, and the challenger would be precluded from raising similar grounds in an action for infringement in Federal Court. (Bracewell Giuliani)

6. … the passed Patent Reform Act should bring much of the false patent marking litigation (and its resulting cost and liability) to a conclusion in the very near future. (Loeb & Loeb LLP)

7. Statutory damages would be eliminated in patent false marking cases. Damages would be limited to compensatory damages to plaintiffs who prove they have suffered a competitive injury due to the false marking. (McDermott Will & Emery)

8. Amendment No. 7 requires the USPTO to conduct a study to determine what the USPTO, the Small Business Administration, and other federal agencies ‘can do to help small businesses obtain, maintain, and enforce foreign patents.’ (Morgan Lewis)

9. …if passed, the proposed legislation would drastically alter the current patent landscape in the U.S. — whether positively or negatively remains to be seen. (Thompson Coburn LLP)

10. The President has previously indicated his support for patent law reform, and we expect he will sign this legislation if and when it is presented to him. (Finnegan)


Is this patent reform law good or bad for American innovation? In the coming days, we’ll be collecting opinions on this matter from IP lawyers and law firms. If you have work to add to the conversation be, ahem, first-to-file on JD Supra – upload it here.

See: Full text copy of America Invents Act – Patent Reform Bill


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