The Leahy-Smith America Invents Act (“American Invents Act”), H.R. 1249, will dramatically reform patent law. Judicial Committee Chairman Lamar Smith brought to the floor a manager’s amendment to the bill which revised text approved by the Judicial Counsel. The manager’s amendment was approved, resisting several floor amendments, which sought to strike amended language, including the first inventor to file provision. On June 23, 2011 the bill passed in the House of Representatives by 304 to 117 (10 not present).
The America Invents Act replaces the current “first inventor to use” system with “first inventor to file,” a common system among most foreign countries. It also modifies the earlier inventor to file defense to infringement by specifying that the subject matter must be reduced to a practice and commercially used at least one year before the effective filing date. These are just to name a couple of the changes enactment of this bill will bring. Congress expresses that the American Invents Act promotes international uniformity by harmonizing U.S. patent registration with that of other countries with whom the U.S. conducts trade.
Part I of the America Invents Act was amended to include technical edits and substantive changes including prior user rights; language to direct USPTO to develop methods for studying diversity of patent applicants; to add a sense of Congress that it is important to protect the rights of small businesses and inventors; to add requirements to the satellite office location selection process; to mandate a USPTO-led study on what USPTO, Small Business Administration, and other agencies can do to assist small businesses obtain, maintain, and enforce foreign patents; to restore language for calculation of 60-day period for application of patent term extension; and to prescribe a requirement that parties provide sufficient evidence to prove and rebut a claim of derivation.
For full text of Part I of the America Invents Act or a Summary prepared by the Congressional Research Service (CRS), a nonpartisan arm of the Library of Congress, please go to: