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The Leahy-Smith America Invents Act, a newly enacted patent law, rewards race to the Patent Office.

The Leahy-Smith America Invents Act (AIA), enacted today, is the most significant revision of the U.S. patent system in decades.  Some changes take effect immediately, while others will be effective in 12 or 18 months.
 
A few of the major changes that will determine how U.S. patents are obtained, interpreted and enforced include:

• moving the United States away from a first-to-invent system (as currently used in the U.S. and, until recently, in Canada) and closer to a first-to-file system as generally used in the rest of the world – under the new system, an inventor who waits to file a patent application risks losing patent rights to another who invented later but filed first;
• implementing new procedures in the U.S. Patent and Trademark for third party challenges to the validity of a recently issued patent – this may result in streamlining patent disputes and reducing litigation costs;
• providing an improved mechanism for third parties to submit information to patent examiners that might be used to narrow or eliminate claims in a pending patent application – this can be an effective way of limiting the scope of patent protection available to competitors; and
• curtailing the ability of private parties to bring false marking suits – the amendments limit standing in false marking cases to the United States government or a person who has actually suffered a competitive injury as a result of a patent marking violation.  The hundreds of false marking cases filed over the past decade were filed, for the most part, by entities that have not suffered any injury (often dozens of lawsuits filed by a single entity established for the sole purpose of asserting and settling false marking claims).  

In an ongoing process, the U.S. Patent and Trademark Office will develop rules to implement these changes and the courts will be involved in interpreting how the new patent law is applied.  The changes will undoubtedly effect how patents are obtained, challenged, interpreted, licensed and litigated.

In view of the increased urgency in taking prompt action to protect patent rights, it may be advisable to evaluate the status of your patent position.  If you have any questions or concerns regarding the changes made by the AIA, please contact:

Michael A. Hierl                           Todd S. Parkhurst
(312) 604-2678            OR          (312) 604-2626 
mhierl@hsplegal.com                  tparkhurst@hsplegal.com