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.

IssueEffective Date from Enactment
I.First Inventor to File 35 U.S.C. 10218 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. 15718 months
IV.Inventor's oath/declaration1 year
V.Third Party Preissuance Submissions,35 U.S.C. 1221 year
VI.Supplemental Examinationupon 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 amountsdate of Enactment
D. Fees for supplemental examination requestupon 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 fees10 days
G. Reserve fund, 35 U.S.C. 42October 1, 2011
H. Refunds and error in payment for cancelled claims and additional feesdate of Enactment
VIII.Micro Entitydate 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. 3011 year
XII.Priority Examinations
A. Prioritized Examination (Track 1)10 days
B. Priority examination re important technologies1 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 Studyreport due not later than 9 months after the date of Enactment
XV.Pro bono programdate of Enactment
XVI.Human organism prohibitiondate of Enactment
XVII.Patent term extension for drugsdate of Enactment
XVIII.Marking (virtual)date of Enactment
XIX.Civil action under 35 U.S.C. 145date of Enactment

The following links provide useful information relevant to the Leahy-Smith America Invents Act:

Leahy-Smith America Invents Act Implementation:

H.R. 1249 Bill:

A Section by Section Summary of H.R. 1249:

Links to the USPTO site listing Potential Items for Public Comment:

Items for Patents with 60-day and Under Effective Dates:

We will be updating these links in the future.