America Invents Act

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act. This act makes some significant changes to existing Patent prosecution and litigation practices. The America Invents Act also makes some changes to Trademark and Copyright Practices.

Unfortunately, there are too many changes to note them all, but here is a summary of some noteworthy changes:

1) Striking the publication, public use and on sale bars for inventions made with federal assistance;

2) Permitting for derived patents and creating derivation proceedings for a subsequent inventor;

3) Modifying the inventor’s oath or declaration requirements to permit reliance on prior filed or substituted oaths in earlier patent filings;

4) Permitting filings by an assignee of the inventor and issuance of the patent to the assignee or real party in interest with sufficient notice to the inventor;

5) Creating a prior commercial use defense to claims of patent infringement (requires clear and convincing evidence);

6) Expressly authorizing written joint research agreements and reliance on filings by the first inventor’s filings for effective filing dates;

7) Creating common ownership for assignees of inventions created under a joint research agreement;

8) Permitting removal of cases with Patent, Plant Variety and Copyright Act claims to federal district courts;

9) Modifying the fees schedules for patents and trademarks (including fees for an expedited examination of patent applications);

10) Creating a satellite office for the USPTO in Detroit, MI;

11) Modifying the “Marking” requirement for patents; and

12) Creating a transitional program for business method patents.

In addition, the America Invents Act requires several studies relating to a variety of matters, including but not limited to the following: implementation of the act, genetic testing, on international protections for small businesses, and the diversity of patent applicants. It also permits the Director of the USPTO to appoint a Ombudsman of Patents for Small Business Concerns.

These changes may have a significant impact on your research and development and business operations.

For more see the full America Invents Act here:

America Invents Act

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