VERY IMPORTANT NEWS for U.S. PATENT APPLICANTS AND OWNERS
Congress approved H.R. 1249, the Smith Leahy America Invents Act, on Sept. 8, 2011. It needs only the President's signature to become law. This is the most comprehensive change to U.S. patent law in 50 years. Selected highlights follow:
1. First to file: This changes the U.S. from its traditional "first to invent" policy to a "first to file" system, similar to most other jurisdictions, to be effective in 18 months.
2. Personal Grace Period: Applicant's own disclosures up to 1 year prior to the filing date will not count as prior art against it. This may or may not include sales and offers of sale up to one year prior to filing.
3. Fee Surcharge: There will be an immediate 15% surcharge on almost all patent office fees, including maintenance fees, effective 10 days from enactment. Anyone with a pending maintenance fee should contact us immediately to avoid the surcharge.
4. Micro Entities: Small entities continue to get a 50% reduction in fees. A new category of "micro entity" will enjoy a 75% reduction in most fees. A "micro entity" is a small entity that was not a named inventor on more than 4 previously filed U.S. utility applications; did not have more than 3 times the median household income in the prior year; and has not assigned to an entity having more than 3 times the median household income in the prior year, or works for a college or university. There are additional details that may be applicable in specific cases.
5. Third Party Submissions of documents: Permitted at any time during prosecution.
6. Assignees can file to start the application: Inventor's oath or declaration still required but can be any time before the patent is granted.
7. New Post Grant Proceedings: Supplemental Examination, Post-Grant Review, and Inter Partes Review are all new and will need further study.
8. Best Mode: Failure to disclose Best Mode is no longer a basis for invalidation.
9. Patent Markings: Virtual Marking by reference to an internet site is permitted. Expired patent markings are not a violation. Private suits for invalid markings must prove competitive injury.
10. Tax Strategies: Certain tax strategies are deemed to be within the prior art and therefore not patentable.
Rest assured we are continuing to monitor and study this legislation and related new developments as they pertain to our clients and their patent portfolios. Please contact us if you have any questions or would like to discuss this further.
