The America Invents Act (H.R. 1249) will bring sweeping changes to the current U.S. patent system. These changes reflect many years of debate between various stakeholders in the patent system. Here are 10 notable features of the legislation:

1. First-Inventor-to-File System. The legislation switches the U.S. patent system from a “first-to-invent” system to a “first-inventor-to-file” system, bringing it more into harmony with other nations. It replaces patent interferences with derivation proceedings to ensure that a patent applicant did not derive the invention from another person.  

2. Post-Grant Review. Provides for a new post-grant review (PGR) proceeding during which a third party can petition for cancellation of a patent claim based on any ground for invalidity, e.g., lack of enablement, lack of written description, or prior art. The petition must be filed within 9 months after issuance of the patent or issuance of a broadening reissue patent. PGR will be adjudicated by administrative patent judges. The parties may settle and terminate a PGR before a final decision is rendered. The legislation also provides a transitional program for instituting PGR of business method patents. For additional details, see our related notice entitled, “Potential Upcoming Changes to Business Method and Software Patents - America Invents Act- H.R. 1249 §18.”

3. Inter Partes Review. Replaces inter partes reexaminations with inter partes review (IPR) proceedings that will be adjudicated by administrative patent judges. IPR may first be requested after 9 months following issuance of a patent or after termination of PGR, whichever is later. IPR must be based on prior art patents or printed publications. A patentee may file a preliminary response to a petition for IPR, explaining why it should not be instituted. Unlike in reexaminations, the standard for instituting IPR will be whether there is a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim. Reexaminations filed before IPR provisions become effective also would immediately be subject to the “reasonable likelihood of prevailing” standard. For additional details, see our related notice entitled, “Patent Litigation at the USPTO.”

4. Preissuance Submissions and Comment. Allows third parties unilaterally to submit to the PTO any patent, published patent application or other printed publication of potential relevance to the examination of an application. The submission must be made before the earlier of: (a) a notice of allowance or (b) the later of: (i) six months after publication or (ii) the first rejection of any claim being examined. The submission must include a concise description of the asserted relevance of each submitted document.

5. Supplemental Examination. Supplemental examination will permit a patent owner to request that the PTO consider, reconsider or correct information believed to be relevant to the patent. If such information raises a substantial new question of patentability, the PTO will order reexamination. Conduct relating to information provided in supplemental examination may not form the basis for later finding the patent unenforceable, unless such allegation was set forth with particularity in a civil action or notice letter prior to the request for supplemental examination.

6. Prior Art. Provides a one-year grace period for disclosures made by the inventor(s) or one who obtained the disclosed subject matter from the inventor(s). Redefines prior art to include subject matter that is “otherwise available to the public.” Also, a sale or public use occurring abroad will have the same effect as a sale or public use occurring in the U.S. For additional details, see our related article entitled, “Fraying The Fringes Of § 102.”

7. Prior Commercial Use. Expands the defense of prior commercial use beyond business method patents. Such a use must have occurred in the U.S. either in connection with an internal commercial use or an arm’s length sale or transfer. The use must have occurred at least one year before the earlier of: (a) the effective filing date of the claimed invention or (b) the date on which the claimed invention was disclosed to the public. The defense is available with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process that would otherwise infringe a claimed invention.

8. Best Mode. Failure to comply with the best mode requirement will no longer be a basis for cancelling a patent claim or holding it invalid or otherwise unenforceable.

9. Marking. Permits suits alleging false marking to be filed only by the Attorney General or those who have suffered a “competitive injury. Limits the recovery of damages to damages “adequate to compensate for the injury.” Also permits “virtual marking” of a product via use of the internet.

10. Immediate Effect. Many provisions of the Act will take effect a year or more after enactment including, e.g., post-grant review proceedings (1 year after date of enactment) and a change to a first-inventor-to-file system (18 months after date of enactment). However, certain changes will take effect immediately upon or soon after enactment, e.g., provisions relating to various fees or to the standard for ordering inter partes reexamination. For details, see our related notice entitled, “Immediate Changes for Patent Reform Under the America Invents Act.”