2011 Patent Reform (AIA)

Late last week the United States Senate voted 89 to 9 to send House Bill H.R. 1249 (titled “the America Invents Act”) to President Obama’s desk. The Senate voted overwhelmingly to approve the same version of the bill that the House of Representatives previously passed. Having received the blessings of both houses of the 112th Congress, the Bill now moves directly to the President, where he is expected to sign it into law almost immediately.

If signed into law, which is fully anticipated, the America Invents Act would transition the U.S. Patent system from a first-to-invent system to a first-inventor-to-file system.  THIS IS HUGE. Previously, the US employed a first to invent system, which traditionally favors the sole or independent inventor.  The first-inventor-to-file system would give inventorship priority to the first individual inventor to file a patent application for a particular invention. That system follows the procedures already in place in Europe but would contrast sharply with the U.S.’s current system, which generally gives priority under the patent laws to the first inventor, even if that inventor is not the first to file an application with the USPTO.  The recently passed legislation also adds a new nine-month window for post-grant review of patent validity and reform the already existing inter partes reexamination process into a new inter partes review process. With both post-grant review and the new inter partes review, 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 citing the same prior art in an action for infringement in Federal Court.

Many people argue that the changes in the patent law favor large corporations and disfavor smaller independent inventors.  If you have any thoughts regarding the newly passed legislation feel free to comment on our post.

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