On Friday, September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act, introducing long-anticipated US patent law reform.

Over six years in the making, this legislation contains the most significant changes in US patent law in very many years; some of them controversial. These changes include, among many others:

  • Converting from a “first to invent” system to a “first to file” system in deciding competing priority claims to identical or similar inventions
  • Expanding post patent grant review procedures to facilitate challenges to questionable patents
  • Creating a new threshold for inter partes re-examination of patents, requiring that the party requesting re-examination demonstrate, “that there is a reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged in the request”
  • Providing a new 75% discount on fees for “micro entities”, to supplement the existing 50% discount for “small entities”
  • Empowering the Director of the US Patent and Trademark Office with new authority to set fees, and providing for a general interim fee increase of 15%, effective September 26, 2011
  • Offering prioritized examination of applications for $4,800
  • Allowing “virtual marking” of patent numbers on products, by displaying a link to a website where the patent number(s) is/are listed  

Many of the new provisions will be implemented only a year from enactment of the legislation, but a number of provisions are effective immediately. These include the patent marking changes, the re-examination provisions, and not surprisingly, government fee increases.

Of immediate importance to clients is that most patent fees will increase by 15% ten days after enactment, i.e. on September 26th. Clients will therefore save 15% by acting immediately to pay any US fees which may be due or payable. This applies to patent issue fees, for example, where the patent application has been allowed but not yet granted, and to patent maintenance fees coming due any time in the next six months