America Invents Act (HR 1269) has been passed by the Senate with no changes

The act now goes to the President, who has said he will sign it.  Some of the changes of the law will go into effect immediately, while some will be delayed by up to 18 months after the President signs it into law.  I will be posting a detailed analysis of the law, and what changes will be effective now, and later.

You can find the final version of the law, as passed by the Senate at

The Implementation of the new Patent Rules

David Kappos, Director of the USPTO recently participated in an hour and a half of Q&A with Eileen McDermott of Managing IP (webcast available here) , discussing how implementing the new patent rules will change Patent Office practice.

He was overall quite positive about the changes.  Below I summarize some the aspects of his comments that I thought were particularly relevant.  My comments are in italics.

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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:

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Reviving the Non-Analogous Art Argument

In their first case since the Supreme Court’s KSR v. Teleflex (2007) decision, the Federal Circuit strongly re-affirmed the rule that obviousness cannot be based on references from non-analogous art in the precedential opinion of In re Arnold G. Klein.  Surprisingly, the opinion did not even mention KSR.

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First to File: Trading a Small Problem for a Host of Big Ones

The America Invents Act (S. 23 & H.R. 1249), previously called the Patent Reform Act of 2011, has gotten further than other recent attempts at amending the current patent laws. The Senate passed the bill on March 8, 2011, by a vote of 95–5. The equivalent Act was passed by the House Judiciary Committee on April 14, 2011, by a vote of 32-3. It is going to be raised before the House in this session.

One of the major changes introduced by the America Invents Act is the switch to “first to file” from “first to invent.” The first person to file a patent application will be entitled to the patent. An earlier inventor, who delays too long, will not be able to have any rights to their invention. The rest of the world has had a first to invent system, and this change is in part to harmonize U.S. law with international law.

Why was this Law Passed

The primary problem that is addressed by changing to first to file is the issue of interferences. Interferences are procedures in which “first to invent” conflicts are resolved. The Board of Appeals publishes interference statistics, and in 2010, a total of 52 interference cases were filed, in 2009 it was 55, in 2008 it was 66, in 2007 it was 59. ( Compare this with a total number of patent infringement cases of 2,896 in 2008, a rate which is increasing at 5.6% per year.

Unfortunately, the proposed solution of changing to First to File has a number of very serious problems, for inventors as well as for attorneys. These problems are likely to include a change of incentives, a cost and timing, a significant malpractice exposure, and an increase in litigation expenses. Solving the problem of interferences by switching to First to File is swatting a mosquito with a howitzer.

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