US Congress passed the Leahy-Smith America’s Invent Act of 2011 on September 2011.  These Act represents the most extensive review of the US Patent System in over 20 years.  There are clear effects on entrepreneurs and small companies in several favorable and unfavorable ways.

A short extract of the changes, that we believe, most clearly impact US and foreign entrepreneurial companies follows:

Sec. 3 – First Inventor to File.

• Transitions the U.S. to a first-inventor-to-file patent system from a first-to-invent while maintaining a 1-year grace period for disclosures.
• Establishes “derivation” proceeding in place of interference proceeding for first-inventor-to-file applications and patents.

Sec. 4 – Inventor’s Oath or Declaration.

• Provides for assignee filing when the inventor is unable or unwilling to do so.

Sec. 5 – Defense to Infringement Based on Prior Commercial Use.

• Expands defense to affiliates.
• Expands defense to all areas of technology (beyond current restriction to business methods).
• Requires showing of both reduction to practice and commercial use at least 1 year before effective filing date.
• Provides exception for patents owned by universities or their technology transfer organizations.

Sec. 6 – Post-Grant Review Proceedings.

• Replaces “optional inter partes reexamination” with “inter partes review” to be conducted by Patent Trial and Appeal Board within 1 year (with possible 6-month extension for good cause); available for life of patent after later of 9 months from grant or termination of post-grant review; not available if filed more than 1 year after service of infringement complaint or if petitioner previously filed DJ action alleging invalidity; basis limited to patents or printed publications; provides for intervening rights re any new or amended claims. Threshold showing is “reasonable likelihood” that the petitioner will prevail. Estoppel standard is “raised or reasonably could have raised” before the USPTO and the courts. Director may limit number of proceedings in first 4 years.
• Establishes “post-grant review” before the Patent Trial and Appeal Board to review validity of issued patents within 9 months of grant on any patentability issue except best mode; not available if petitioner previously filed DJ action alleging invalidity; review should be completed within 1 year (with a possible extension of 6 months for good cause); provides for intervening rights re any new or amended claims. Threshold showing is “more likely than not” that at least 1 of the claims is unpatentable. Estoppel standard is “raised or reasonably could have raised” before the USPTO and the courts. Director may limit number of proceedings in first 4 years.
• Provides for settlement agreements to be treated as “business confidential information” at the request of a party to the proceeding.

Sec. 7 – Patent Trial and Appeal Board.

• Establishes Board to include the Director, the Deputy Director, the Commissioners for Patents and Trademarks and the administrative patent judges, to replace the Board of Patent Appeals and Interferences. Appeals, derivation proceedings, post-grant reviews, and inter partes reviews will be heard by at least 3 members of the Board.

Sec. 8 – Preissuance Submissions by Third Parties.

• Allows third parties to submit printed publications of potential relevance to examination either before the earlier of a notice of allowance or the later of 1) 6 months after publication of the application or 2) date of first rejection, accompanied by a fee and a concise description of the asserted relevance of the submitted document.

Sec. 10 – Fee Setting Authority.

• Defines “micro entity” (to include universities) and provides for 75% fee reduction for those applicants.
• Requires additional $400 fee (with 50% reduction for small entities) for patent applications not filed by electronic means; these fees would not be available for obligation or expenditure.

Sec. 11 – Fees for Patent Services.

• Establishes prioritized examination fee of $4,800 (above usual fees) with 50% reduction for small entities, effective 10 days after enactment.
• Implements 15% surcharge on all patent fees, effective 10 days after enactment.

Sec. 12 – Supplemental Examination.

• Establishes process for a patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent.
• Upon a determination that a “substantial new question of patentability” is raised, the Director must order an ex parte reexamination.
• A patent shall not be held unenforceable in litigation on the basis of conduct relating to information considered in a supplemental examination if such is concluded before the date an action is brought.
• If the Director becomes aware of material fraud during the supplemental examination, the Director may take appropriate action and must refer the matter to the Attorney General.

Sec. 15 – Best Mode Requirement.

• Eliminates as a defense in infringement actions the alleged failure to disclose the best mode for carrying out the subject invention.

Sec. 16 – Marking.

• Provides for virtual marking by posting patent information on the Internet.
• Virtual marking provisions apply to all pending and future infringement cases.
• Provides that only the U.S. may sue for the penalty authorized by the false marking statute.
• Civil suits re false marking are limited to persons who suffer a competitive injury;
  damages adequate to compensate for the injury may be recovered.

Sec. 17 – Advice of Counsel.

• Provides that failure of an infringer to obtain advice of counsel can not be used to prove willfulness or induced infringement.

Sec. 18 – Transitional Program for Covered Business Method Patents.

• Establishes an 8-year transitional post-grant review proceeding for review of the validity of certain business method patents.
• Covered patents include those that claim a method or corresponding apparatus for performing data processing operations utilized in the practice, administration, or management of a financial product or service, but not patents for technological inventions; effective date is 1 year after enactment and applies to patents issued before, on, or after that date.
• Petitioner for review must have been sued for, or charged with, infringement of the subject patent.
• Provides that an ATM is not a “regular and established place of business” for venue purposes.

Sec. 19 – Jurisdiction and Procedural Matters.

• Clarifies federal court jurisdiction over patent and copyright cases.
• Establishes requirements for joinder of accused infringers in patent cases.

Sec. 32 – Pro Bono Program.

• Director shall work with IP law associations in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.

Sec. 33 – Limitation on Issuance of Patents.

• Codifies “Weldon Amendment” to prohibit issuance of a patent on “a claim directed to or encompassing a human organism.”

Sec. 35 – Effective Date.

• Provides an effective date of 1 year after enactment unless otherwise specified.

Sec. 37 – Calculation of 60-Day Period for Application of Patent Term Extension

• Requires that the date of marketing approval, to begin the 60-day calculation, is the next business day if the time of transmission of approval is after 4:30 P.M., Eastern Time
• Applies to any application for term extension pending on, filed after, or as to which a decision regarding the application is subject to judicial review on, the date of enactment.