America Invents Act
To help clients understand and prepare for the potential impact of changes in patent law, Banner & Witcoff offers the following content as a resource to monitor and analyze developments on the Leahy-Smith America Invents Act.
Background
On March 8, 2011, the U.S. Senate voted 95 to 5 to pass S. 23 “America Invents Act” also known as the Patent Reform Act. The Patent Reform Act of 2011 was introduced in the U.S. Senate by Senator Patrick Leahy on January 25, 2011. Significant changes to the patent system in S. 23 include:
- First-Inventor-to-File System
- Post-Grant Opposition System
- Post-Grant Review for Business Method Patents
- USPTO Fee-Setting Authority and USPTO Funding
On March 30, 2011, Congressman Lamar Smith introduced H.R. 1249 “America Invents Act” to the U.S. House of Representatives. On April 14, 2011, the House Judiciary Committee voted 32 to 3 to approve the legislation. On June 23, 2011, the U.S. House of Representatives approved H.R. 1249. H.R. 1249 is similar to the legislation passed by the Senate. A few of the key differences in H.R. 1249 include:
- Protection of inventors’ prior user rights if they disclose inventions one year before filing patent applications.
- Extended timeline for inter partes review initiation after litigation begins.
- Longer time frame for post-grant review.
- A three-year safe harbor from liability for expired patents.
- A sunset provision for the PTO’s fee-setting authority.
On September 8, 2011, the United States Senate approved the Leahy-Smith America Invents Act (H.R. 1249), finalizing congressional acceptance of long-anticipated U.S. patent reform. The Senate’s passage comes only months after the House of Representatives voted to pass the bill on June 23, 2011, and brings many changes to U.S. patent law.
On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act into law.
Legislation
Media
Banner & Witcoff attorneys are available to answer questions and discuss patent reform. Media inquiries should be directed to Chris Hummel at (202) 824-3126 or chummel@bannerwitcoff.com.
related news
09.14.2011 | Gary D. Fedorochko comments on patent reform in BNA, GenomeWeb, and the Chicago Daily Law Bulletin
03.09.2011 | Patent Reform Bill S.23 passes through U.S. Senate
01.18.2011 | Matthew P. Becker discusses the prospects for Patent Reform in 2011, in a Chemical & Engineering News article
related library documents
01.23.2013 | Potential Benefits to Filing Certain U.S. Patent Applications Before AIA Changes Go Into Effect; Banner & Witcoff IP Alert. 01/23/2013 (McKee, Christopher L.)
11.19.2012 | Rules for America Invents Act Provision; Banner & Witcoff IP UPDATE. Fall/Winter 2012 (Fedorochko, Gary D.; Becker, Matthew P.)
08.30.2012 | America Invents Act Final Rules Take Effect on September 16, 2012; Banner & Witcoff IP Alert. 08/30/2012
(Wooten, William E.)
(Wooten, William E.)
02.23.2012 | Intellectual Property Law 2012: Top Lawyers on Trends and Key Strategies for the Upcoming Year; Thomson Reuters. February 2012. (Nelson, Jon O.)
11.29.2011 | The America Invents Act and What It Means for the Future of Patent Acquisition and Enforcement; Peking University's Innovation and Intellectual Property Journal. 11/29/2011. (Fedorochko, Gary D.)
09.16.2011 | The America Invents Act and What it Means for the Future of Patent Acquisition and Enforcement; Banner & Witcoff Intellectual Property Alert. 09/16/2011. (Fedorochko, Gary D.)
