Today the U.S. Senate endorsed all provisions in H.R. 1249: Leahy-Smith America Invents Act, a comprehensive patent reform bill, the progress of which we have reported in earlier alerts found here and here. The Senate's passage of the bill by a vote of 89 to 9 means that the bill will make it to the President's desk shortly. When passed (President Obama had previously pledged that he would sign a patent reform bill when it reaches his desk), the legislation would offer the first significant change to the U.S. patent system in nearly sixty years.
The Senate's successful vote on the bill came just days after a cloture vote held on September 6, where the Senate garnered enough votes required to effectively limit consideration of the bill that had passed in the House of Representatives by a vote of 304-117 back in June, to an additional 30 hours. Majority Leader Harry M. Reid (D-Nev.) filed a cloture motion last August, just before the Senate adjourned for vacation, to which the Senate gave unanimous consent. Today, several amendments were proposed, yet none approved.
Despite the differences between H.R. 1249 passed by the House last June, and S.23, the original Senate bill passed last March, the Senate today still managed to pass the Leahy-Smith America Invents Act. Arguably the biggest difference between the two involved the issue of U.S. Patent and Trademark Office ("PTO") funding, which had threatened to derail patent reform. The House bill, unlike the original Senate bill, did not ban fee diversion, the oft-criticized practice of diverting PTO revenue that exceeds the agency's budget to other government programs. Today's bill passed by the Senate does not ban fee diversion. Starting October 1, 2011, fee collections by the PTO during a fiscal year that exceed the amount appropriated to the PTO for that fiscal year will be deposited in a Reserve Fund and made available to the extent and in amounts provided in appropriations Acts.
Today's passed bill contains numerous provisions, some of which (along with their effective dates) are listed here:
Provisions of Passed Bill |
Effective Date |
Inventor's oath or declaration:
|
1-year from date of enactment. Applies to any patent application that is filed on or after that effective date. |
First inventor to file:
|
18 months from date of enactment. Applies to any application and patent with a claim having an effective filing date on or after the effective date for this provision, or having a specific reference under 35 U.S.C. Sections 120, 121, or 365(c) to an application or patent having such a claim. |
Defense to infringement based on prior commercial use:
|
Applies to any patent issued on or after date of enactment. |
Best mode requirement:
|
Applies to proceedings commenced on or after that date. |
Human Organism Limitation:
|
Date of enactment. Applies to any application that is pending on, or filed on or after, the date of enactment. |
Patent Term Extension for Drug Product:
|
Date of enactment. Applies to any application for extension that is pending on, filed after, or to which a decision regarding the application is subject to judicial review on the date of enactment. |
Third Party Preissuance Submissions:
|
1-year from date of enactment. Applies to any patent application filed before, on, or after that effective date. |
Post-Grant Review:
|
1-year from date of enactment. Applies with certain exceptions to patents described in section 3(n)(1), "First-to-File Provision." E.g., patents with a claim having an effective filing date on or after the 18 months from date of enactment, or a specific reference under 35 U.S.C. Sections 120, 121, or 365(c) to an application or patent having such a claim. |
Supplemental Examinations: Establishment of supplemental examination procedures for issued patents to allow cure of potential inequitable conduct occurring during the original prosecution. Our previous alerts on an earlier version of this provision can be found here and here. |
1-year from date of enactment. Applies to any patent issued before, on, or after that effective date. |
Inter Partes Review:
|
Inter partes review: 1-year from date of enactment and applies to any patent issued before, on, or after that effective date. Reexamination (transition): Date of enactment and applies to requests for inter partes reexaminations filed during the 1-year period beginning on enactment date. |
Patent Trial and Appeal Board:
|
1-year from date of enactment. Applies to proceedings commenced on or after that effective date, except for certain specific exceptions. |
Fee Setting Authority:
|
Fee-setting authority: Date of enactment with a 7 year sunset provision. Fee schedule: There are different effective dates for the specific fees. |
Business Method Patents:
|
Date of enactment. Applies to any application that is pending on, or filed on or after enactment date, and to any patent that is issued on or after enactment date. |
Advice of Counsel:
|
1-year from date of enactment. Applies to any patent issued on or after that effective date. |
Marking:
|
False marking: Applies to all cases, without exception, that are pending on, or commenced on or after, the date of enactment. Virtual marking: Applies to any case that is pending on, or commenced on or after, the date of enactment. |
Jurisdiction and Procedural Matters:
|
Applies to any civil action commenced on or after the date of enactment. |
Transitional Program for Covered Business Method Patents:
|
1-year from date of enactment. |
Diversity Studies:
|
Not later than 6 months after date of enactment. |
Genetic Testing Study:
|
Report is due no later than 9 months after date of enactment. |
The above list contains the major provisions found in the Leahy-Smith America Invents Act. All provisions, including other less significant provisions not above can be found in the full bill here. The PTO has also created a website seeking comments relating to "Leahy-Smith America Invents Act Implementation" that can be found here.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.