A brief overview of major changes to the U.S. patent laws introduced by the Leahy-Smith America Invents Act

1. September, 2011 Overview of H.R. 1249 “Leahy-Smith America Invents Act” 1

3. Enactment expected September 16, 20112

5. No longer able to “swear behind” a reference (with a date less than one year prior to effective filing date) by alleging prior conception/reduction to practice

6. Exceptions to “first to file”:

7. Not prior art if reference is inventor’s or joint inventor’s own art, or derived from inventor either directly or indirectly (and less than one year prior)

8. Not prior art if reference is owned by same entity or subject to obligation to assign to same entity (and less than one year prior)3

10. 35 U.S.C. § 102(e), now new § 102(a)(2) and § 102(d)(2)

11. Prior art date for prior patents and applications now includes foreign priority date (not just domestic priority date)

12. Effective Date: 18 months after enactment. Applies to applications with effective filing dates on or after Effective Date.

13. Currently pending and applications with an effective filing date prior to the Effective Date are subject to first to invent 4

14. Interferences v. Derivation Proceedings Interferences will no longer be relevant, because priority is determined by effective filing date (not date of conception) New: Derivation Proceedings (alleging application is derived from another) will be handled by the re-named Patent Trial and Appeal Board Effective Date: 18 months after enactment. Applies to applications with effective filing dates on or after Effective Date. 5

16. Cannot be filed if civil action challenging validity has already been filed by same party

17. Patentee is allowed one motion to amend or cancel any challenged patent claimEffective Date: one year after enactment (for certain business method patents), and all patents with an effective filing date 18 months on or after enactment 6

22. Effective date: any patent issued on or after date of enactment9

24. Standing to sue limited to those with “competitive injury”

26. Law amends 35 U.S.C. § 282 so that failure to disclose best mode not a basis for invalidity

27. Effective date: on or after date of enactment 10