Legal Alerts

President Obama Signs the 'Leahy-Smith America Invents Act' into Law, Reforms Patent Law


Last week, Congress passed the most significant patent reform legislation in decades when the Senate voted 89 to 9 to adopt H.R. 1249, the Leahy-Smith America Invents Act (View PDF). President Obama signed the bill into law on Friday, September 16.

The most dramatic change in the Act is a shift from the current “first to invent” system to a “first to file” system. Amendments to 35 U.S.C. § 102 establish that a patent will be effective as of the actual filing date of the patent or an application for the patent. The Act includes some limited exceptions to the new “first to file” standard for certain disclosures made one year or less before the effective filing date of the patent by the inventor or someone who obtained the subject matter of the patent from the inventor. A party contending that an inventor derived a claimed invention from another inventor can petition the U.S. Patent & Trademark Office to institute a derivation proceeding, which replaces interference proceedings. The goal of the shift to a “first to file” system is to harmonize U.S. and international patent law. 

The Act also creates a new procedure for the post-grant review of patents. Third parties now have a nine-month window after a patent issues during which they can petition to challenge the patentability of patent claims on any ground. After the nine-month window has passed or after a post-grant review has been completed, third parties can seek to cancel patent claims based only on patents or printed publications through the new inter partes review process, which replaces the inter partes reexamination process. 

Several other provisions of the Act are likely to affect the patent litigation landscape:

  • The Act limits the circumstances under which parties can be joined as defendants in a patent infringement suit. Allegations that each party has infringed a patent are not sufficient for joinder; instead, a plaintiff can pursue multiple defendants in a single patent infringement action only where the infringement claim arises out of the same transaction or occurrence and where the case raises questions of fact common to all defendants.
  • Changes to 35 U.S.C. § 292 will immediately eliminate qui tam suits for false marking.
  • The failure to disclose the best mode will no longer constitute a ground for holding a patent invalid or unenforceable.
  • In limited circumstances, prior commercial use at least one year before the effective filing date or public disclosure can constitute a defense to infringement under 35 U.S.C. § 273.
  • The failure of an infringer to obtain an opinion of counsel or to present that opinion during trial cannot be used to prove willful infringement or the intent to induce infringement.

Some of the provisions of the Act are effective immediately upon enactment, while other provisions become effective over the course of eighteen months.

This alert highlights some of the key reforms of the Leahy-Smith America Invents Act, which touches all parts of the U.S. patent system. Lindquist & Vennum’s Intellectual Property Group will track the effects of the Act on the patent litigation landscape in order to best help our clients understand and benefit from the Act. We also look forward to ushering clients—both as plaintiffs and defendants—through a new and evolving litigation process.

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