The Leahy-Smith America Invents Act is poised to become law once signed by President Barack Obama, which is expected in the next few weeks. The Act will bring about dramatic changes in the U.S. patent laws. If the bill is signed into law, many provisions affecting the patent process will take effect in one year, but an increase in patent filing fees will take effect almost immediately.
Here's how we believe the Act might impact you:
- First to file wins. The Act will transition the U.S. from a "first to invent" system to a "first to file" system, which will put the U.S. more in line with the rest of the world. In light of this change, it’ll be more critical than ever to get a patent application filed as soon as possible if you have an invention for which you’d like to seek patent protection. We’re prepared to help our clients stake their claim and establish their place at the head of the line.
- Reduced fees for micro entities. Many fees will be reduced by 75% for micro entities. A micro entity is an individual or small business that hasn’t been named as an inventor on more than 4 other patent applications and doesn’t exceeded certain gross income limitations. Institutions of higher education also qualify.
- Pay for priority examination. For an additional fee of $4,800, an applicant filing an original nonprovisional patent application can request priority examination of their application. So, those willing or able to pay the additional fee may have their application examined earlier.
- Third party submissions. The Act permits a third party to submit patents and certain other publications of potential relevance to the Patent Office during the examination of an applicant’s patent application. If you are aware of prior art that may bear on the patentability of an invention for a competitor, we can help you get it in front of the patent office.
- Prior commercial use defense. The Act provides a new defense to a charge of infringement – a good faith internal commercial use of a patented machine or process, or a sale or transfer of a product therefrom will be a defense to a claim of patent infringement. However, the commercial use must have occurred at least a year before the filing date or disclosure of the claimed invention.
- Process to challenge patents streamlined. The Act provides a new post-grant review process to challenge the validity of an issued patent. A post-grant review request must be filed within 9 months of the issuance of the patent. Therefore, it is important to monitor any patent applications in your technological field and present challenges quickly after any patent issues thereon.