On September 8, 2011, the Senate voted 89-9 to pass the America Invents Act (the “Act”). Thereafter the bill was sent to President Obama, who is expected to sign it into law. While the provisions of the Act include more funding for the United States Patent and Trademark Office, the eventual elimination of interference proceedings, and the creation of a potentially more streamlined post-grant challenge process, the most noteworthy portion of the Act grants priority to a patent application based on the application’s filing date. This represents a significant departure from the longstanding United States patent law giving the first person to invent a device priority over all others.
The “first to file” provision of the Act will be met with mixed reactions. Individual inventors and small businesses claim that the “first to file” provision will create a race to the Patent Office, requiring them to expend significant amounts of money and other resources in order to quickly file patent applications ahead of other parties who may be working in a similar technological field. Larger businesses believe that the Act will be beneficial to the patent system by reducing the number of disputes relating to the priority of patent applications by creating an objective priority date. Of a more general concern is the possibility that the rush to file patent applications might result in a lower overall quality of the claims described in patents, potentially resulting in ambiguity and causing difficulty in interpreting those claims in the context of patent infringement litigation.
Beyond changing the application priority date, the Act also changes the landscape relating to the recent rash of false patent marking lawsuits. Since the Federal Circuit’s decision in Forest Group, Inc. v. Bon Tool Co., false marking claims have plagued the courts with individuals bringing false marking lawsuits on behalf of the federal government through qui tam actions. The Act addresses this recent trend by altering the patent false marking statute so that only those who have suffered a competitive injury will have standing to bring a false marking claim. Additionally, the Act now permits patented products to be marked with the word “patent” or “pat.” along with an internet address pointing to a website containing more information about the patented device.
Ultimately only time will tell how the Act will alter the landscape of patent prosecution and litigation. In the meantime, inventors, and the attorneys that offer intellectual property advice to those inventors, should be mindful of the significant changes implemented by the America Invents Act, and should take steps to reduce the amount of time between perfecting an invention, and filing a patent application to cover that invention.