IP: What to expect from the America Invents Act ... and when

A timeline of key provisions to watch over the next 18 months.

On Sept. 16, President Obama signed into law the Leahy-Smith America Invents Act, which represents the first comprehensive revision of the patent laws since 1952. It will significantly impact patent litigation, patent prosecution and funding for the United States Patent Trademark Office (USPTO). Most of the law is scheduled to go into effect over the next year and a half. Key provisions and their effective dates are summarized below.

Effective Sept. 16:

  • Restrictions on multi-defendant patent lawsuits: Unrelated defendants can be joined in a single lawsuit only if joint and several liability exists, or if the defendants engaged in the same infringing transaction/occurrence and there are common questions of fact.
  • Reduction of qui tam false marking actions: Besides the U.S. government, only those that can show a “competitive injury” can sue for false patent marking.
  • Prior commercial use defense expanded: The enforcement of patents issued on or after Sept. 16 may be subject to a prior commercial use defense.
  • Less enforcement of the best mode requirement: An accused infringer can no longer challenge a patent’s validity due to noncompliance with the best mode requirement.
  • Unpatentable subject matter: No patents will be issued covering a tax strategy or a human organism.
  • Fee setting authority: The USPTO is authorized to set all fees commensurate with its estimated costs and reduce most patent fees for “micro-entities” by 75 percent.

Effective Sept. 26:

  • Fast track patent prosecution: Prioritize examination by paying an extra fee.
  • Interim surcharge on patent fees: A 15 percent surcharge will be added to all fees until the USPTO makes a specific fee adjustment.

Effective Nov. 15:

  • New patent application filing fee: An extra $400 fee is due if the application is not filed electronically.

Effective Sept. 16, 2012:

  • Fewer consequences for not presenting advice of counsel at trial: Willful infringement and intent to induce infringement are not proven by the absence of advice of counsel.
  • Post-grant review proceedings: Within nine months of a patent’s issuance, a third party can challenge the patent’s validity at the USPTO.
  • Transitional procedure for post-grant review of business method patents: Entities alleged to infringe a business method patent may seek post-grant review at the USPTO.
  • Supplemental review proceedings by inventor: An inventor may request consideration or correction of information in connection with a patent.
  • Assignee can file patent application: An assignee can file a patent application in its own name.

Effective March 16, 2013:

  • First-to-file: U.S. patent law shifts to a “first-to-file” system, meaning the first filed application for an invention has priority over later-filed applications.
  • Expanded definition of prior art: Prior art includes all publicly available information and new types of information from outside the U.S.
  • Derivation proceedings at the USPTO: A patent applicant may challenge the ownership of an earlier application derived from the applicant’s work.

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Eric Lobenfeld

Eric Lobenfeld is the co-head of the U.S. Intellectual Property Practice of Hogan Lovells. He has more than 35 years of experience litigating cases involving...

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