CLIENT UPDATE - Fundamental Changes to Patent Law

September 8, 2011

On September 8, 2011, the Senate passed patent reform legislation (Leahy-Smith America Invents Act) which is expected to be signed into law by President Obama.  It is considered to be the most significant patent reform in over 50 years.  

The legislation provides for immediate changes, short-term changes, and long-term changes to patent law.  While many important changes are included, most notable is that the United States will convert to a “first to file” system from a “first to invent” system.  Eighteen months after enactment, the U.S. patent system will become a race to the patent office.  The legislation also provides for an expanded post-grant review to challenge questionable patents. Finally, the legislation gives the U.S. Patent Office authority to set fees.   
The following are highlights of some important changes within the 152 page bill.  The U.S. Patent and Trademark Office has posted information about the legislation at
Date of enactment changes

  • The patent infringement defense of “failure to disclose the best mode” will no longer be available.
  • New alternative of “virtual” marking of patented products by reference to an internet address will be available.
  • Certain tax preparation strategy inventions will be defined as within the prior art, in order to exclude the issuance of patents for such inventions.
  • With regard to false marking, the marking of a product with the number of a patent that covered that product but has expired will no longer be a false marking.
  • A 75% reduction of many fees will be available to entities that are within the definition of a “micro entity.”

Short-term changes

  • Ten days after enactment, a 15% surcharge will be added to substantially all U.S. Patent Office fees, including maintenance fees.
  • Ten days after enactment, a “Prioritized Examination” track will be available for an additional fee of $4,800.

Long-term changes

  • One year after enactment, new procedures will be available for review of issued patents.
  • Eighteen months after enactment, the “first to file” priority system will take effect.  Currently, a “first to invent” system is used.

Wyatt's intellectual property attorneys will continue to monitor this situation as the changes are implemented and the effects are felt by inventors and the business community.  If you have any questions about the impact of the legislation on your organization, please contact your Wyatt attorney.