U.S. Patent Reform Act Signed into Law

On September 16, 2011, U.S. President Barack Obama signed into law the Leahy-Smith Patent Reform Act, which has been described as the most sweeping revision of U.S. patent law since the 1950s. Among other things, the new law abandons the “first-to-invent” rule, which provides that the first person who conceives of an invention is entitled to the patent. When the new law comes into effect, U.S. patent law will become aligned with other countries by following the “first to file” rule, under which the patent is awarded to the inventor who is the first to file a patent application, regardless of who first conceived of the invention. One result of this change will be to eliminate patent interference proceedings, a process by which administrative judges determine who was the first to invent the claimed invention.

The new law also—

  • creates derivation actions and proceedings, in which a published application or patent can be challenged on the ground that it covers an invention that has been derived from another person’s work
  • limits the circumstances in which multiple parties may be joined as defendants in infringement litigation
  • eliminates the ability to obtain patents for tax strategies and claims directed to or encompassing a human organism
  • provides for new post-grant review processes to enable parties to challenge issued patents for a period of time
  • provides for a fast-track “prioritized examination,” which shortens the delay between the filing of an application and a decision on whether to grant a patent, upon payment of an additional fee
  • changes the inter partes re-examination process
  • provides for virtual marking of patent-protected products
  • eliminates the best mode defense as a basis for invalidation, while retaining the requirement that patent applications disclose the best mode
  • restricts false patent marking litigation
  • makes more widely available a defense to infringement based on the defendant’s commercial use of the patent’s subject matter in the U.S. at least one year prior to the effective filing date of the patent
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