• Congress Digs Grave for First-to-Invent Patent System - Is It Shovel Ready?
  • October 7, 2011 | Authors: David J. Hill; Paul S. Weidlich
  • Law Firm: Chambliss, Bahner & Stophel, P.C. - Chattanooga Office
  • On September 16, 2011, the President signed the Leahy-Smith America Invents Act, which substantially changes U.S. patent law for the first time since 1952.  Under the Act, the U.S. patent system converts from a first-to-invent to a first-to-file system, and the U.S. Patent and Trademark Office ("USPTO") may increase patent-related fees by 15%, effective 10 days after signature by the President, or effective on September 26, 2011.  Most other changes will take effect on March 16, 2013.  We have outlined below some of the most important changes.

    First-to-File System

    The Act converts the U.S. patent system from a first-to-invent to a first-to-file system, making the system more consistent with the patent systems of most foreign countries.  Under a first-to-file system, patent rights to an invention are awarded to the applicant with the earliest effective filing date, not necessarily the first to conceive the invention. This will likely result in an increase in the number of provisional patent applications that are filed, as inventors may now place a higher priority on obtaining the earliest possible filing date.

    Early Disclosure

    Under the old law, patents, publications, public uses, and sales of the invention occurring more than one year before the effective filing date of the patent application comprised "prior art" against which the patentability of the invention was measured.  Patents, publications, public uses, and sales within one year of the filing date were not considered "prior art".  However, the only exceptions to "prior art" available under the Act are public disclosures made by or on behalf of the inventor himself that occur no more than one year before the filing of the patent application.  This may have the effect of encouraging public disclosures of inventions, especially in cases when an inventor suspects that a competitor is engaged in research similar to that which led to the invention.  In such a case, an early disclosure by one inventor would, if followed within a year by a patent application, preclude another inventor from obtaining a patent on the same or a similar invention.

    Third-Party Challenges

    The America Invents Act also provides three expanded ways a third party can challenge a patent in the USPTO.  The first is pre-issue submissions of printed publications together with a description of the relevance of the publication.  The second is third-party requested post-grant reviews that may be initiated by any party within nine months after the patent issue date.  The third is inter partes review proceedings, which may be commenced after the nine-month post-grant review window closes.  These proceedings are limited to patentability challenges based on prior art patents and printed publications.

    Prior User Defense

    The Act creates a "prior user" defense to infringement, which may encourage inventors of methods or processes that can be kept secret to attempt to protect their inventions as trade secrets.

    False Marking

    The Act includes provisions relating to the recent spate of false marking patent lawsuits.  The Act will eliminate all of those lawsuits except for those filed by the U.S. government or by competitors who can prove actual damages.  Statutory damages are no longer available to anyone other than the U.S. government.  The false marking provisions will be effective immediately and will apply to previously filed cases that are pending on September 16, 2011, the date of the Act.

    Best Mode

    While an inventor must still disclose the best mode for making and using the invention, failure to disclose the best mode will no longer be a basis for invalidating an issued patent.

    Fee Diversion

    The legislation passed by Congress does not address fee diversion from the USPTO.  Thus, Congress retains the ability to raid the coffers of the USPTO of fees paid by applicants and patent owners.  Since 1992, Congress has diverted almost one billion dollars from the USPTO.