Leahy-Smith America Invents Act: Will It Happen This Year?

Congress has tried to amend the Patent Act for the last decade, introducing ever more complex versions of legislation which is designed to change the U.S. to first to file, and serve numerous interested parties.

This year’s version has passed the Senate, by a large margin, and has been passed from the House Committee.

The current major hold-up is that the Senate version ends fee diversion, leaving all funds the Patent Office collects with the Patent Office. The House wants that money under Congressional control. In addition to this big issue, there are also now numerous differences between the version of the bill passed by the Senate, and the one currently pending in the House. In particular, Lamar Smith has made a manager’s amendment to the act, which appears to make a large set of (mostly minor changes). Here is a list of these changes, courtesy of Greg Aharonian of PATNEWS.  I have bolded the more significant changes:

– Switches short title to Leahy-Smith America Invents Act

– Amends Determination by Patent Trial and Appeal Board by adding
“In appropriate circumstances, the Patent Trial and Appeal
Board may correct the naming of the inventor in any application
or patent at issue.”

– Strikes Study of Patent Litigation and adds new language

– Makes technical changes to Cents of Congress about converting
to first to file system

– Strikes prior user rights language and inserts new prior user
rights language

Filing deadline for inter partes is lowered from 1 year to
9 months

– Institution of inter partes review language changed to “be
instituted” from “commence”

– Inter partes review language changed from “petitioner, real
party in interest, or privy of the petitioner” to “petitioner
or real party in interest”

Post grant filing deadline lowered to 9 months from 1 year for
post grant review after date of grant of patent

Deletes language that requires Director to make each notice of
the institution of post grant review available to the public.

– Amends conduct of post grant review section to “provide
petitioner with at least 1 opportunity to file written
comments within a time period established by the Director.”

– Strikes Public Institutions of Higher Education language in
fee setting authority micro entity section and inserts new

– Adds prior regulations not affected language at the end of
Section 10 fee setting authority

– Strikes language in Section 11 Fees for Patent Services that
involves applications subject to secrecy order and conflicts
of interest language

Inserts 15 percent fee surcharge language for all fees charged
or authorized

Strikes reduction in fees for small entity patents in Section
11 and inserts prioritized examination fee language

– Strikes fraud section from supplemental exam section 12 and
inserts new fraud language

– Changes language in false markings section to apply to “all
cases, without exception, that are pending on, or commenced
on or after, the date of enactment.” Previous language said,
“any case that is”

– Makes changes to Section 18 including adding language that
says “The petitioner in a transitional proceeding that results
in a final written decision under section 328(a) of title 35,
United States Code, with respect to a claim in a covered
business method patent”,

– Changes language in Section 18 to say “the claim” instead
of a claim in a patent. Strike “a transitional proceeding
that resulted in a final decision” and inserts “that
transitional proceeding”.

Lowers sunset of Section 18 to 8 years instead of 10 years.

– Deletes Transfer by Court of Appeals for the Federal Circuit
language in Section 18

– Inserts waiver language in Section 19 (Jurisdiction and
procedural matters) that says “a party that is an accused
infringer may waive the limitations set forth in this section
with respect to that party.”

– Strikes annual report and annual spending plan language in
Sec. 22 (Patent and Trademark Office Funding) and inserts
new reports language

– Inserts effective date language for Sec. 22 of October 1,
2011 or the first day of the first fiscal year that begins
on or after the date of enactment.

– Strikes section 25 patent ombudsman program for small business
concerns and inserts new patent ombudsman program language.

– Strikes Medco provision (Sec. 27, Calculation of 60-Day period
for application of patent term extenstion)

– Inserts section on Permitting second opinions in certain
genetic diagnostic testing

Inserts Sec 30 limitation on issuance of patents that says
“notwithstanding any other provision of law, no patent may
issue on a claim directed to or encompassing a human organism.”

7 thoughts on “Leahy-Smith America Invents Act: Will It Happen This Year?”

  1. What everyone seems to be missing is that the USPTO backlog of 700,000+ patent applications is an administrative, not a legal, problem. Is there anyone who thinks that a complete overhaul of the legal structure of the USPTO will improve its capacity to process patent applications? Even in the long term? I doubt it.

    In the short term, an overhaul at this time will no doubt cripple an already struggling bureaucracy. Before moving forward with HR 1249, the House should consider what it will mean for the processing of the backlogged and other patent properties. By working on the wrong problem here, we will compound the one we actually have.

    Also, very few applications become involved in or even qualify for interferences (contests over who has the right to recognition as first inventor), and yet the costs and complications of interferences are being used as an excuse to make the fundamental conversion to first to file. How is it possible that it will cost less or be less complicated on the whole to make all patent applications subject to post-grant proceedings? Where is the net improvement with first to file?

    This legislation is an outrage. It will drive much of the patent community into chaos. If that is not the object, HR 1249 should be resoundingly rejected.

  2. Thank you for your post, Voice. I agree with you that this change will cause massive chaos, and will solve none of the systemic problems that plague the Patent Office.

    I guess we will get to see what happens, because the law has been passed. Now, it’s reconciliation, rule changes to implement the law changes, and then on to a new and strange world of first to invent, extra special challenges for patents which may be enforced against banks, not to mention four additional administrative responsibilities for the Patent Office, with no guaranteed additional funding.

  3. Looks like a recipe for disaster. It also smacks of making conditions more favorable to existing corporations with money, and unfriendly to new innovation from private inventors — very un-American. This takes us one more step in a march towards Socialism and similarity with the EU, not something any of us should want.

    I’m all for competition and don’t think that there needs to be special treatment of the little guys, but there should be equality and small-level access room for submitting a patent claim from a one man team. And, there should be a way to prove you have an idea first if it gets commandeered. No way should first-to-file EVER be a legally defensible position.

  4. This has been in the works for decades. Anyone who is surprised hasn’t been paying attention. The US is the last major country to harmonise its patent laws with the rest of the world, and has been very slowly dragged, kicking and screaming, into doing so, one step at a time. A few of the changes were made in the 1995 Act, and only now will America adopt the rest of the changes that European countries made in the 1970s, and perhaps not quite all of those. This debate is more about American exceptionalism than it is about patents.

  5. To Voice: the PTO’s backlog is not ANY kind of problem. The agency chews through 700,000 cases in jig time, and most inventors suffer not at all from that small delay in application processing — as most inventors aren’t ready for market anyway. Thus, fussing over the backlog is nonsensical.

    Judith is concerned over a “new and strange world of first to invent” — but I think she’s confused, as we ALREADY HAVE first-to-invent. As I understand it, the new law would switch us to first-to-file. That’s not strange, really, as we’re virtually the only country that uses first-to-invent. Essentially all the rest of the world has used first-to-file, forever. It is simpler, should generally eliminate interferences, and will make patent folk abroad quit rolling their eyes over the U.S. system. The PROBLEM with the change is that first-to-invent is more intellectually respectable than first-to-file, and tends to somewhat impede the crass “race to the patent office” — in favor of getting inventions refined a bit better before filing. (Incidentally, if interferences will be omitted I don’t understand the focus on adjusting inter-partes deadlines.)

    The bit about human organisms does not seem to me all that mysterious: most likely the objective is to cater to Lamar Smith’s fundamentalist followers by prohibiting stem-cell patents.

    The worst part of the law appears to be the sections that let secret practice of certain prior art off the hook, thereby giving an advantage to people who use trade-secret law rather than patent law to “protect” their innovations. This change is certainly contrary to the objective behind the Constitutional (thanks to Ben Franklin, as I seem to recall) charge to Congress to establish a patent system so as to “promote the progress of the useful arts”.

  6. Peter: I have cases pending that I filed in 2006 that have a current “expected first action in two more years.” I just got an issue notification with a term extension of 1000 days. That’s some serious backlog.

    You are right, I meant to write “strange new world of first to file.” The problem I see is that no other country has Best Mode and Enablement requirements. So by leaving those two in place, and switching to First to File, we are disadvantaging ourselves compared to other countries.

    I think the worst parts of the current law are the give-away to banks with challenging business method patents, and the give-away to the drug company that missed its extension by changing the law on that. Those two will cost us millions in additional litigation, and hundreds of millions in drug costs respectively.

  7. I, have been fighting this matter for 13 years now, USPTO No. 5055918 ( 17 year issuiance, but should have been 20 Year Japanization Harmony rule ), as I told the USPTO legal staff, Spar, that I paid my first Maintenance fee of $ 550, under duress, subject to the next fee, of $ 1500, 5.3 years later, then a third fee of $3500 by October 08, 2011, under the 20 year USPTO rule….I have spent millions of dollars, to date to shut down this criminal RICO group of directorship, originally a commissionership, with U,S, Congressional over-site, non existent now 2011, So, late comers to my party, I will soon shut the USPTO down under military Title 35, of which to find my fight game, goto http://myspace.com/ultrateslan and http://myspace.com/temperalhm ….THAT IS ALL!!!

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