Today President Obama signed the ‘‘Leahy-Smith America Invents Act,’’ also known as the patent reform act. The final bill is here in PDF form and here in text form (with handy hyperlinks to its various sections). The U.S. Patent and Trademark Office's web page on the bill is here, and additional government press releases are here, here and here.
While the bill unquestionably contains the most significant changes to the patent laws since the current version of the Patent Act was passed in 1952, the bill does not "reform" the patent laws as much as many people had hoped. Patent reform bills have been before Congress for most of the last decade, and competing interest groups have blocked various reforms in earlier proposals. For example, the electronics, computer and other tech industries would have liked to have seen reform of how patent damages are awarded, but pharmaceutical companies and non-practicing entities opposed such changes. Today's bill is a compromise containing a number of unrelated changes, many of which are highly technical in nature and matter only to patent lawyers.
Since the Senate passed the House version of the bill, H.R. 1249, on September 8, there have been tons of articles written about the bill's scope and effect. Rather than write my own analysis, I'll just link to a bunch of them. (This post will therefore get updated regularly as I receive additional articles of interest.)
- The Patently-O Blog has posted several articles: Discussions of changes to Prior Art (35 U.S.C. §102 is significantly changed); the immediate elimination of the best mode defense and vastly improved joinder rules (the latter is an especially welcome reform); international patent harmonization; a collection of remarks by several patent law professors; patenting human organisms; a quick increase in PTO fees; the dis-joinder rules; provisional patent applications; implementation of the act; preclusive inventor disclosure; the new 35 U.S.C. §102.
- Mark Lemley is working on a particularly interesting post, "Things You Should Care About in the New Patent Statute." As of Sept.16, it was only available on Facebook, but Mark has now published it on SSRN.
- Harold C. Wegner has a 139-page analysis of the bill. And an updated 176-page book.
- The Sterne Kessler Goldstein & Fox firm has devoted an entire section of its web page to the bill, with a number of helpful articles. These include "Ten Things to Know About the America Invents Act of 2011"; "Immediate Changes for Patent Practice Under the America Invents Act"; "Patent Litigation at the USPTO Under the America Invents Act" (which has a nice table comparing post grant review with inter parties review); a timeline of changes under the act; and two articles about ways to challenge patents under the new bill, which adds some new ways to challenge patents and changes existing procedures (this article in particular has a useful table comparing all the ways to challenge patents at the PTO).
- The Banner & Witcoff firm has an interesting article, "The America Invents Act and What it Means for the Future of Patent Acquisition and Enforcement."
- Here is a Techdirt article about the bill. And another article about the many lawsuits that were filed in the days before the bill was signed, to avoid the anti-joinder provision of the bill, new 35 U.S.C. §299 (scroll down just a bit to get to §299).
- The IEEE has an engineering perspective on the bill, including a table discussing how the court system has provided some patent reform over the last several years.
- The bill has many different effective dates for different provisions. The Finnegan Henderson firm has assembled a table showing these dates.
- The Foley & Lardner firm also has a resource page on the act. Some of its articles so far include: An overview of the bill; How the act will impact litigation; and a list of the different effective dates.
- Oblon Spivak has yet another presentation of the bill's different effective dates. And another one. Morrison & Foerster has a "cheat sheet" on the effective dates.
- Here are client alerts by Morrison & Foerster; Ropes & Gray; Morgan Lewis; Fenwick & West; a somewhat longer alert by Baker Botts; McDermott Will & Emery; Dorsey & Whitney; Alson + Bird; Squire Sanders & Dempsey; Quarles & Brady; Proskauer Rose; Orrick; Mayer Brown; Gibson Dunn & Crutcher; Smith, Gambrell & Russell.
- Fish & Richardson has an article about the prioritized examination process, which will let patent applicants obtain patents more quickly -- for a price.
- IP Watchdog has a post about the new provision limiting joinder of multiple defendants in a lawsuit.
- Broken Symmetry has this numbered list of highlights.
- Wilson Sonsini Goodrich & Rosati has a "top ten list"of highlights and an article about potential effects on patent litigation.
- Haynes and Boone has an article, "Practice Tips Under the Patent Reform Rules."
- Foley Hoag talks about the new "micro-entity" status.
- Oblon Spivak points out that the PTO has changed the standards for granting an inter partes review under the old Patent Act. "The new standard for any such request filed on or after September 16, 2011 is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This new standard will apply to all inter partes patent reexamination filings going forward." Oblon also points out that the PTO now has a web page with implementation information about the new bill, which includes documents on issues such as inter partes examinations, tax strategies, best mode, and human organisms.
- While the bill has been touted as creating a "first to file" system, in fact it might more accurately be called a "first to disclose" system. Here's an article (by a Foley & Lardner attorney) explaining why. (Patently-O noticed this potential problem in a 2010 article.)
- King & Spalding has a 20-page newsletter with articles about new §102, derivation proceedings, post-grant review, the prior use defense, and others.
- Davis Wright Tremaine has this 12-page paper about the act. This discusses the "first to disclose" issue, among others.