The Patent Reform Act of 2011 was introduced on January 25, 2011, by Senator Patrick Leahy. It addresses significant changes to the patent system, including first-to-file; post-grant review proceedings (oppositions); inter partes review; preissuance submission by third parties; USPTO fee-setting authority and USPTO funding; supplemental examination; micro entity fees; tax strategy patents; best mode; residency for Federal Circuit judges; creation of special post-grant review for business method patents; USPTO authority to establish satellite offices; creation of a USPTO ombudsman; and USPTO authority to prioritize inventions of national importance. The Senate Judiciary Committee amended the bill and unanimously approved it on February 3, 2011. After lively debate and a variety of amendments proposed, the Senate passed the legislation on March 8, 2011, by a wide 95-5 margin.

Congressman Lamar Smith introduced H.R. 1249 “America Invents Act” on March 30, 2010, to the House of Representatives, which has also held extensive hearings on patent law reform. The House Judiciary Committee approved the legislation with amendments on April 14, 2011, with a margin of 32-3. The House version of the legislation is very similar in many ways to the legislation passed by the Senate, and amendments accepted in Committee reduced the number of differences between the two bills. The House version would establish prior user rights for an earlier inventor who failed to be the first inventor to file, but would require both reduction to practice and commercial use at least one year before the late inventor filed an application. The House allows a longer window for inter partes review initation after a litigation begins, with 12 months compared to 6 months in the Senate version. The time frames for post-grant review also differ, with one year in the House compared to nine months in the Senate. The House version only establishes USPTO fee setting authority for six years, whereas the Senate makes this change permanent. Finally, the House offers a three-year safe harbor after a patent expires for false marking.

Legislation

Senate

Passed Senate - March 8, 2011 (“America Invents Act”) [PDF] Reported in Senate - February 3, 2011 [PDF] Introduced in Senate by Senator Leahy - January 25, 2011 [PDF]

House

Introduced in House - March 30, 2011 [PDF]

To view current amendments to H.R. 1249, click here to search the Library of Congress database on legislative developments.

Congressional Testimony on Patent Law Reform

House

Committee on the Judiciary Hearing: "Promoting Investment and Protecting Commerce Online: Legitimate Sites v. Parasites, Part II" - April 6, 2011 [Website]

Statement of The Honorable John Morton, Director, U.S Immigration and Customs Enforcement [PDF]

Floyd Abrams, Senior Partner, Cahill Gordon & Reindel LLP [PDF]

Kent Walker, Senior Vice President and General Counsel, Google Inc. [PDF]

Statement of Christine N. Jones, Executive Vice-President, General Counsel, & Corporate Secretary, The Go Daddy Group, Inc. [PDF]

Committee on the Judiciary Hearing:"America Invents Act" - March 30, 2011 [Website]

Statement of The Honorable David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office [PDF]

Statement of The Honorable Steve Bartlett, President and Chief Executive Officer of the Financial Services Roundtable [PDF]

Statement of Steven W. Miller, Vice President and General Council for Intellectual Property, Proctor & Gamble Company [PDF]

Statement of Mark Chandler, Vice President, General Counsel and Secretary, Cisco Systems, Inc. [PDF]

Statement of John Vaugh, Executive Vice President, Association of American Universities [PDF]

Committee on the Judiciary Hearing: "Promoting Investment and Protecting Commerce Online: Legitimate Sites v. Parasites, Part I" - March 14, 2011 [Website]

Statement of Maria A. Pallante, Acting Register of Copyrights [PDF]

Statement of David Sohn, Senior Policy Counsel, Center for Democracy & Technology [PDF]

Daniel Castro, Senior Analyst Information Technology and Innovation Foundation (ITIF) [PDF]

Frederick Huntsberry, Chief Operating Officer, Paramount Pictures Corporation [PDF]

Committee on the Judiciary Hearing: Review of Recent Judicial Decisions on Patent Law - March 10, 2011 [Website]

Statement of Dan L. Burk, Chancellor's Professor of Law, University of California, Irvine [PDF]

Statement On Behalf of the Business Software Alliance by Andrew J. Pincus, Partner, Mayer Brown LLP [PDF]

Statement of Dennis D. Crouch, Associate Professor of Law, University of Missouri School of Law [PDF]

Committee on the Judiciary Hearing: Driving American Innovation: Creating Jobs and Boosting our Economy – March 9, 2011 [Website]

Statement of Anthony Atala, M.D., Director, Wake Forest Institute for Regenerative Medicine and W.H. Boyce Professor and Chair, Department of Urology, Wake Forest University School of Medicine [PDF]

Michael S. Fulkerson, Ph.D., Chief Technology Officer, Rosetta Stone, Inc. [PDF]

Scott Smith, Ph.D., Professor and Chair, Department of Mechanical Engineering and Engineering Science, University of North Carolina at Charlotte [PDF]

Committee on the Judiciary Hearing: Crossing the Finish Line on Patent Reform: What Can and Should Be Done? - February 11, 2011 [Website]

Testimony of David Simon, Associate General Counsel, Intellectual Property Policy, Intel Corporation [PDF]

Statement of Carl Horton, Chairman Coalition for 21st Century Patent Reform and Chief IP Counsel of General Electric [PDF]

Statement of Judge Paul R. Michel (Ret.) former Chief Judge U.S. Court of Appeals for the Federal Circuit [PDF]

Committee on the Judiciary Hearing: How an Improved U.S. Patent and Trademark Office Can Create Jobs - January 25, 2011 [Website]

Statement of David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office [PDF]

Statement of Douglas K. Norman, President, Intellectual Property Owners Association and General Patent Counsel for Eli Lilly and Company, Inc. [PDF]

Statement of Robert J. Shapiro, Chairman, Sonecon, LLC; Senior Fellow of the Georgetown University McDonough School of Business; and Former Under Secretary of Commerce for Economic Affairs [PDF]

Government Statements

Statement of House Judiciary Chairman Lamar Smith

April 14, 2011 [Website]

March 30, 2011 [Website]

March 8, 2011 [Website]

Statement of the Senate Judiciary Committee about the America Invents Act [Website]

White Board: Austan Goolsbee, Chairman of the Council of Economic Advisers, on Patent Reform [Video]

USPTO Press Release [Website]

Statement of Administration Policy [PDF]

Industry Organization Statements

American Intellecutal Property Law Association (AIPLA)

Letter to Majority Leader Reid and Minority Leader McConnell re: Support for S. 23, The Patent Reform Act of 2011 [PDF]

Patent Reform Legislation Chart (itemizing AIPLA's position on each section of the bill) [PDF]

Intellectual Property Owners Association (IPO)

Letter to the Senate re: Full 2011 Funding for the U.S. Patent and Trademark Office - An Urgent Jobs Issue [PDF]

Letter to the House re: Full 2011 Funding for the U.S. Patent and Trademark Office - An Urgent Jobs Issue [PDF]

Biotech Industry Organization (BIO)

House Judiciary Committee’s Patent Reform Bill is in Need of Reform, Says BIO [Website]

BIO Commends Launch of House Patent Reform Process [Website]

BIO Hails Senate Passage of America Invents Act [Website]

BIO Commends Senate Judiciary Committee Passage of Patent Reform Act of 2011 [Website]

BIO Supports Patent Reform Act of 2011 [Website]

Related Prior Bills

S. 515: Patent Reform Act of 2009

Introduced in the Senate - March 3, 2009 [PDF]

Reported in the Senate - April 2, 2009 [PDF]

H.R. 1260: Patent Reform Act of 2009

Introduced in the House - March 3, 2009 [PDF]

H.R. 1908: Patent Reform Act of 2007

Introduced in the House - April 18, 2007 [PDF]

Reported in the House - September 4, 2007 [PDF]

Engrossed in House [Passed House] - September 7, 2007 [PDF]

Placed on Calendar Senate - September 11, 2007 [PDF]

H.R. 2795: Patent Reform Act of 2005

Introduced in the House - June 8, 2005 [PDF]