Yesterday, March 8, 2011, the United States Senate passed S.23, the "America Invents Act of 2011" following significant amendments that stripped certain provisions from the bill such as the proposed limitations on damages, willfulness and venue in district court infringement actions. The bill passed by the Senate contains many important provisions affecting the patent process in the United States:
- Patent System Moves From First-to-Invent System to First-to-File System. The bill would harmonize the US patent system with the rest of the world by switching from a first-to-invent system to a first-to-file system.
- PTO Given Fee-Setting Authority. The bill would allow the PTO to set patent and trademark fees without Congress's prior approval.
- End to Fee Diversion. The bill ends diversion of fees collected by the PTO into the general fund. A USPTO Revolving Fund will enable those fees to be used by the PTO for future expenditures.
- Third Parties May Submit Prior Art During Patent Examination. The bill would allow third parties to submit prior art for consideration during patent examination.
- Post-Grant Review During First Nine Months After Issue. Post-grant review could be requested on any grounds in the first nine months after a patent issues. The PTO Director would have sole authority to authorize or deny post-grant review.
- Supplemental Examination Process Provided for Patent Owners to Submit Prior Art and Prevent Its Use in an Inequitable Conduct Defense. The bill creates a new procedure called "supplemental examination," which allows the patent owner to make pre-litigation submissions to the PTO of prior art not disclosed during examination. Such submissions could not then be used to support an inequitable conduct defense.
- Ban on Tax Strategy Patents. Strategies for reducing, avoiding or deferring tax liability are not eligible for patents.
The bill now moves to the United States House of Representatives for consideration. The timetable for House consideration and the slate of provisions it is likely to consider are unclear at this time.