The 2011 Patent Reform Act

The most significant changes to the U.S. patent law in more than 50 years have finally come to pass. The practice of U.S. patent law will never be the same. It took more than six years of Congressional debate for the U.S. Senate to pass the House version of the Leahy-Smith America Invents Act ("the Act") on September 8, 2011, by a vote of 89–9. President Obama signed the bill into law on September 16, 2011. The Act represents a major overhaul of many provisions of U.S. patent law established by the Patent Act of 1952.

The Act fundamentally changes how patent applications will be prosecuted in the U.S. Patent and Trademark Office ("USPTO") by changing from the current first-to-invent system to a first-to-file system, redefining what is prior art, and modifying various procedures in significant ways. As a result, patent applicants will now be primarily concerned with getting a patent application on file as early as possible. Prior considerations such as conception and reduction to practice will become less important in future practice. In addition, the Act adds new layers of post-grant proceedings and introduces provisions that have a direct impact on patent litigation.

SIGNIFICANT PROVISIONS OF LEAHY-SMITH AMERICA INVENTS ACT

While the Act introduces many changes to the patent system, the most significant involve the move from a first-to-invent to a first-to-file system, and the implementation of new post-grant proceedings.

Moving to a First-to-File System

One of the most significant changes in the Act is replacing the current first-to-invent system with a first-to-file system, which is the system followed worldwide. Under the current first-to-invent system, if two independent inventors file for a patent on the same invention, the inventor with the earlier invention date gets the patent. On the other hand, with a first-to-file system, the inventor with the earlier filing date gets the patent. Proponents of the first-to-file system say that it will simplify the process of acquiring patent rights, while opponents claim that a first-to-file system will harm small businesses and individual inventors, who will not necessarily have the resources to win a race to the patent office. Perhaps recognizing the debate about this change, the Act provides for a study to determine the effect that the move to first-to-file would have on small businesses, with a report to be made to Congress no later than one year after enactment. Meanwhile, the provisions relating to the switch would not take effect until 18 months after enactment.

The move from first-to-invent to first-to-file comes with corresponding changes to 35 U.S.C. § 102, which defines "prior art" as an invention for purposes of determining novelty. Various provisions of the present § 102 define prior art on the basis of invention date (§§ 102(a), (e), and (g)). The Act amends § 102 to remove these provisions, so that prior art is defined in relation to the effective filing date of the application under examination, rather than the invention date. Thus, under the Act, it would no longer be possible to "swear behind" prior art by establishing an earlier invention date.

The Act also changes § 102 in other notable ways. The overall effect of these changes appears to increase what is available as prior art.

Removal of Geographic Limitations for Prior Art. Under current law, an invention is not patentable if it was in public use or on sale in the United States more than one year prior to the date of the application in the United States (§ 102(b)), or if it was known or used by others in the United States prior to the date of invention (§ 102(a)). The Act eliminates this geographic limitation on prior art, providing that an invention is not patentable if it was "patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." Thus, public use, sales, and knowledge by others available anywhere would be prior art.

Recognition of a Grace Period Only for an Inventor's Own Prior Art. Under current law, an invention is not patentable if it "was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application" (§ 102(b)). The Act eliminates this one-year grace period except in limited circumstances. In particular, the grace period only applies to disclosures made by the inventor, a joint inventor, or "another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor."

In a new section that resembles the present § 102(e), but is adjusted for filing date instead of invention date, the Act provides that an invention is not patentable if it "was described in a patent, or in an application for [U.S.] patent published or deemed published ..., in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention." The Act does provide, however, that any subject matter disclosed in a patent or patent application that was obtained from the inventor or a joint inventor cannot be used against him under this section. Owing to the definition of "effective filing date" provided in the Act, this provision permits reliance on the filing date of a foreign-filed application as an effective filing date under this section. Unlike in the European Union, where prior art under a similar provision is available only for novelty challenges, "secret" prior art under this section will be available both for purposes of novelty and obviousness.

Post-Grant Proceedings and Other Third-Party Challenges

Post-Grant Proceedings. The post-grant proceedings currently available include reissue, ex parte reexamination, and inter partes reexamination. The Act keeps reissue and ex parte reexamination substantially the same, but significantly revises inter partes reexamination, which is renamed "inter partes review," and introduces new "post-grant review," "supplemental examination," "transitional post-grant validity review of certain covered business method patents," and "derivation proceedings."

Inter Partes Review. The inter partes review provisions in the Act are similar to the current inter partes reexamination provisions provided in 35 U.S.C. §§ 311–318 in that a petitioner may request review only under § 102 or 103 (novelty and obviousness) and only on the basis...