On March 8, 2011, the U.S. Senate passedS.23, also known as the America Invents Act, which proposes a series of reforms to the U.S. patent system. Most notably, the bill replaces the "first-to-invent" standard in the U.S. with a "first-inventor-to-file" (FITF) system comparable to patent systems in other countries, while retaining some aspects of the U.S. one-year grace period. The definition of prior art drastically changes under the FITF system. Other notable features of the bill include:
- A new post-grant review procedure by which challenges to patents on any grounds can be made within nine months of their issuance;
- Changes to the existing reexamination procedures. Reexaminations are challenges to issued patents in the PTO based on an alleged substantial new question of patentability;
- Replacement of interferences with derivation proceedings. Derivation is an allegation that a patent applicant “stole” an invention from another;
- The granting of fee-setting authority to the PTO and the banning of the diversion of fees the PTO collects; and
- Constraints on false patent marking complaints and procedures for updating marks online. False patent marking occurs when a product is marked with a patent that has expired or does not cover the product.
The America Invents Act was introduced to the House of Representatives on March 30, 2011. H.R. 1249 was subsequently approved by the House Judiciary Committee on April 14, 2011, with slight amendments. Notable substantive differences between S.23 and H.R. 1249 include:
- H.R. 1249 expands prior use rights as a concession to the FITF system;
- Fee-setting authority would expire after six years in H.R. 1249, as opposed to it being permanent in S.23;
- The new post-grant review could be initiated within 1 year, instead of the nine months specified in S.23; and
- H.R. 1249 expands limitations on false marking litigation with a three-year safe harbor after a patent expires.