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Patent Reform Legislation Becomes Law

Posted Sunday, September 25, 2011 by Mike Gibbons

The United States Congress has passed the “Leahy-Smith America Invents Act,” and the President has now signed the legislation. With the President’s signature, what many have called the most significant revision to our patent law in fifty years now becomes law.

There are a number of changes to U.S. patent law embodied in the legislation. Most of the provisions are effective one year from the date it was enacted, although there are certain changes that go into effect immediately.

Among the provisions is a shift from a “First to Invent” to a “First to File” regime. In short, irrespective of the party who conceives of an invention first, whoever gets a patent application on file first at the U.S. Patent and Trademark Office is entitled to priority for a patent on the invention. This harmonizes the patent law of the United States with that of most of the rest of the world.

With respect to filing fees, while at one time the proposed patent legislation included a “micro-entity” filing status entitling individual inventors to receive a 75% discount on their filing fees, the final bill actually extends the 75% discount to all small entities providing their documents are electronically filed with the patent office.

On the other hand, the PTO will be raising all of its rates by collecting a 15% surcharge on all fees. The surcharge takes effect 10 days after the law is enacted, so by October PTO filing fees will have increased by at least 15%. The good news about the increase in fees is that with the increased revenue for the PTO, more examiners could be hired, which would lead to a decrease in the pending application backlog and shorten the length of time before applications are examined.

A new accelerated examination provision is also a part of the revision to patent law. While applications currently have at least a three to four year pendency barring special circumstances, inventors will be able to elect “Prioritized Examination” for a surcharge of $4,800 ($2,400 for small entities). For now, the PTO will be limited to accepting 10,000 requests for prioritized examination a year, until it has an opportunity to set new fees.

Also new is an additional post-grant review procedure, where third-parties can file an opposition to a patent in the Patent and Trademark Office. While rules for the post-grant review procedure have yet to be promulgated, it will provide another method for third-parties to challenge a patent within the patent office beyond the existing inter-partes review procedure.

These are just a sampling of the contents of the new law. The PTO will be conducting rulemaking related to the provisions of the Leahy-Smith America Invents Act over the next several months. While we don’t yet know what all the procedures that will eventually be instituted at the patent office are, it is safe to say that 18 months from now patent law in the United States will be very different.

Ruttler Mills PLLC
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