President Obama today signed into law the America Invents Act, the first significant change in patent law since 1952. The legislation is aimed at streamlining the patent process and reducing costly legal battles pertaining to intellectual property rights.
Changes in law prescribed by the patent reform legislation will take effect over time. Following is a summary of when certain key provisions of the new law are set to begin.
Patent Marking (takes effect September 16, 2011)
The provisions allowing patent owners to use virtual marks and those curtailing false marking suits take effect immediately. Patent owners who have not already done so should consider implementing a virtual marking system to reduce the cost of updating their patent marks.
Fee Increases (takes effect September 26, 2011)
Most U.S. Patent and Trademark Office fees will increase by 15 percent on September 26, 2011. Intellectual property owners should consider paying any outstanding maintenance fees, issue fees, etc., before that date.
Post-Issuance Proceedings (takes effect September 17, 2012)
The provisions establishing the new post-grant review proceeding and the replacement of inter partes reexamination with inter partes review will generally take effect on September 17, 2012. The standard for instituting inter partes reexamination/inter partes review changes immediately, however, from a “substantial new question of patentability” standard to a “reasonable likelihood that the petitioner will prevail” standard, and applies to all requests for inter partes reexamination/review filed on or after today.
Patent challengers have only nine months from a patent’s issuance to use post-grant review. Potential challengers should monitor patent applications of interest closely to ensure all options are available to them when a patent issues.
First Inventor to File (takes effect March 17, 2013)
Most provisions related to the transition from a first-to-invent system to a first-inventor-to-file system will take effect on March 17, 2013. However, the two systems will exist simultaneously for as long as 21 years after that date. Which rules apply will depend upon whether patent applicants claim “old” inventions†, “new” inventions, or both.
Although the first-inventor-to-file provisions will not take effect for another year-and-a-half, applicants should evaluate their filing strategies well in advance of March 17, 2013 to take full advantage of these changes.
The patent reform signed into law today brings sweeping change to patent-related processes. Patent applicants should consider what changes to their application filing strategies are needed to adjust to a first inventor-to-file system. Also, patent holders and challengers will soon have available to them new procedures for correcting and challenging issued patents and should begin considering how these new procedures can be used to their advantage.
For a complete listing of when the statute’s various provisions take effect, please click here