Senate passes the Leahy-Smith America Invents Act
- September 9, 2011
- Firm News
It was announced yesterday evening that the "Leahy-Smith America Invents Act" (H.R. 1249) has been passed by both houses of congress and sent to President Obama for signature. The President has stated that he will sign the bill into law which we expect to occur in the next few days. The United States Patent and Trademark Office has been proactively preparing for implementation of this new law, as has the Oblon, Spivak firm. A copy of the law as passed is available on our website. As part of our comprehensive Patent Reform Analysis, we are first providing you with a brief timeline of the effective dates of the numerous sections of the law. We will soon be making available additional comments, information and practice tips for our clients.
Issue | Effective Date from Enactment | |
I. | First Inventor to File 35 U.S.C. 102 | 18 months |
II. | Change in language to 35 U.S.C. 103(a), and (b) | 18 months |
III. | Repeal of Statutory Invention Registration,35 U.S.C. 157 | 18 months |
IV. | Inventor's oath/declaration | 1 year |
V. | Third Party Preissuance Submissions,35 U.S.C. 122 | 1 year |
VI. | Supplemental Examination | upon expiration of the 1-year period beginning on the date of Enactment |
VII. | Fee Setting for Patents' Items | |
A. Authority to set or adjust fees for recovering costs for fees… | date of Enactment | |
B. Electronic filing incentive ($400 fee forfailure to do so) | upon expiration of the 60-day period beginning on date of Enactment | |
C. Section 11 new statutory amounts | date of Enactment | |
D. Fees for supplemental examination request | upon expiration of the 1-year period beginning on the date of Enactment | |
E. Fee for prioritized examination (Track 1) | 10 days | |
F. 15% transition surcharge fees | 10 days | |
G. Reserve fund, 35 U.S.C. 42 | October 1, 2011 | |
H. Refunds and error in payment for cancelled claims and additional fees | date of Enactment | |
VIII. | Micro Entity | date of Enactment |
IX. | Business Method Patents (tax avoidance/reduction strategies) | date of Enactment |
X. | Reexamination (transition) | date of Enactment |
XI. | Citation of prior art in a patent file, 35 U.S.C. 301 | 1 year |
XII. | Priority Examinations | |
A. Prioritized Examination (Track 1) | 10 days | |
B. Priority examination re important technologies | 1 year | |
XIII. | Best Mode | |
A. Failure to disclose best mode is no longer abasis on which a claim may be cancelled… | date of Enactment | |
B. The impact of a conforming amendment to35 U.S.C. 119(e)… | date of Enactment | |
XIV. | Genetic testing Study | report due not later than 9 months after the date of Enactment |
XV. | Pro bono program | date of Enactment |
XVI. | Human organism prohibition | date of Enactment |
XVII. | Patent term extension for drugs | date of Enactment |
XVIII. | Marking (virtual) | date of Enactment |
XIX. | Civil action under 35 U.S.C. 145 | date of Enactment |
The following links provide useful information relevant to the Leahy-Smith America Invents Act:
Leahy-Smith America Invents Act Implementation: http://www.uspto.gov/patents/init_events/aia_implementation.jsp#heading-1
H.R. 1249 Bill: http://www.uspto.gov/patents/init_events/BILLS-112hr1249eh.pdf
A Section by Section Summary of H.R. 1249: http://www.uspto.gov/patents/init_events/section_summary_26jul2011.pdf
Links to the USPTO site listing Potential Items for Public Comment: http://www.uspto.gov/patents/init_events/patents_items.pdf
Items for Patents with 60-day and Under Effective Dates: http://www.uspto.gov/patents/init_events/60day_list.pdf
We will be updating these links in the future.