United States Enacts Patent Reform

Kyle Peterson

Patterson Thuente IP

peterson@ptslaw.com

Patterson Thuente IP

Topic: Legal

The Leahy-Smith America Invents Act was signed into law Friday, September 16, representing drastic changes to come for the U.S. patent system.

For the general public, the America Invents Act (AIA) has been described as a package of reforms that should improve the U.S. patent system. In theory, these improvements will happen by harmonizing the U.S. patent system with other patent systems around the world, addressing problems with the way the U.S. Patent and Trademark Office sets fees and improving the mechanisms for challenging patent validity at the patent office, rather than in the courts.

For inventors, patent owners and patent professionals, the AIA represents the biggest change to U.S. patent law in 60 years. Initially introduced into Congress in 2005, the final bill includes three major changes, along with a wide variety of smaller changes.

Inventors will no longer be able to rely solely on dated laboratory notebooks to show they are entitled to a patent. The AIA changes the U.S. from the current first-to-invent patent system to a first-inventor-to-file patent system with a first-to-publish grace period. This change brings the U.S. closer to, but not into complete harmonization with, other patent systems around the world. The new rule will go into effect for applications filed 18 months after the date of enactment. However, given the first-to-publish grace period of up to 12 months before the filing date that is provided in the bill, inventors, patent owners and patent professionals actually have only six months to evaluate how these changes will impact their patent filing strategies. For most inventors, the best option will be to evaluate proposed inventions at an early date, and make patent filing decisions early in the development process.

The AIA gives the Patent Office fee-setting, but not fee spending, authority. While the Patent Office will now have the ability to set fees on its own, the fees will be subject to public hearings and Congressional oversight. While the general fee-setting authority will take some time to implement, the two things that will go into effect almost immediately are a 15 percent surcharge on Patent Office fees, and the waiver of a $400 extra filing fee if a patent application is filed electronically.

Several new post issuance proceedings have been created by the AIA. The new review proceedings are designed to provide a more effective option for determining patent validity at the Patent Office by imposing a statutory one-year timeline on the proceedings and having the proceedings run by an administrative patent judge. The adjudication process will provide for limited discovery and an oral hearing.

For those interested in following the Patent Office’s implementation of the AIA, the USPTO has set up a special website on which to post updates and gather input from the public.

The ultimate goal of the reforms is to encourage investment and innovation, and as a result, stimulate job growth. Given that the major changes represented in the 150 page bill will be phased in over time, it could be a decade or more before their true impact on the U.S. patent system can be fully evaluated.