Smith Leahy America Invents Act – A major reform to Patents Law

patent lawPatent reform has been the topmost agenda in US Economic Reforms. The key priorities of Obama Administration, mainly stimulation of economic growth and generation of employment opportunities, recognized technological innovation   as a means to reinstate economic momentum. The patent reform is considered as an essence to foster innovation, encourage competition among countries, and stimulate job growth and to guard companies from misuse and abuse of the patent system. The Smith-Leahy America Invents Act (Smith-Leahy Act/AIA), signed by President Obama on September 16, 2011 is the fulfillment of long cherished dream of American entrepreneurs. The new speedy process enables American entrepreneurs to bring their inventions to market more rapidly there by generating more job opportunities. Better assurances are offered to patent applicants and owners under this law. Additional steps were introduced by the president, to utilize the ideas from American’s universities and research labs.

The five major advantages of America Invents Act are:

1. Shorter gestation period for Patent Processing period
The new and growing companies are giving chances to have important patents reviewed, with a novel fast-track option that guarantees completed processing within 12-month’s period instead of waiting for a long period of three years.

2. Reduction in the present patent backlog
The existing backlog of nearly 700,000 applications can be reduced by means of the new law.

3. Reduction in Litigation
Entrepreneurs are provided with new cost effective methods of settling disputes on patent validity thereby reducing the number of legal suits.

 4. Increased patent quality
The quality management process of the PTO (Patent and Trademark Office) had been improved. The standards for the issuance of patents and quality of the examinations were elevated. Additional tools and resources are provided for this purpose.

5 Enables protection of American inventor’s  IP abroad
The PTO has collaborated with other patent offices around the world to increase efficiency and rapid patent processing for applicants seeking protection in different jurisdictions across the world. Since the new law harmonizes the American patent process with the rest of the world, it enables entrepreneurs to market products in the US and at the same time, to export it abroad as well.

 Some of the Major changes provided under the Act

 First-to-file Rule
The most remarkable change to existing United States patent law is the implementation of a first-to-file rule which replaces the first-to-invent rule. Under this new rule the inventor who first files a patent application in the US patent Office is granted patent protection over anyone else who claims to be the inventor of the same technology.

According to the previous rule, the patent protection was available to those who invented first irrespective of any application filed before. The claim of invention was determined through complex process of interferences which were replaced by derivation proceedings in the new Act. The new rule directs the later applicant to initiate a derivation proceeding within a limited time period in such situations where the inventor of an earlier filed application had derived the claimed invention from the later applicant. The Patent Trial and Appeal Board that replaces the earlier Board of Patent Appeals and Interferences determines the claim after analyzing evidence and corrects the inventorship of the application or patent accordingly.

The first-to-file rule emphasizes on the importance of filing patent applications early , before inventions are reduced to practice and considers using a short-form invention disclosure document at the initial stage so that inventors can quickly put decision makers on notice of the development of innovative technology.

Prior commercial use, a justification for infringement
If the accused infringer can prove bonafide commercial use of the infringing device or method, earliest of either one year before the effective filing date of the patent or the date when the invention is publicly disclosed, then he has a valid defense.

 Priority Examination
The Priority Examination provision inthe Smith-Leahy approves accelerated patent application examination. A patent must not have more than four independent claims and thirty total claims to be qualified for prioritized examination. The applicant is freed of cumbersome prior art search reports and analyses as was necessary in earlier expedited procedures. Priority examination is intended mainly for inventions that have to be quickly brought to market.

Post-Grant Review
The new Act authorizes a person other than the owner of a patent to file a post-grant review petition opposing the patent grant within nine months after the grant of a patent. The review will be permitted by the Patent Office only if the information provided in the petition demonstrates that it is more likely than not that at least one of the claims challenged in the petition is not patentable.

False patent marking proceedings
The new Act authorizes only the United States or a victim of false patent marking to initiate a suit on that basis thereby cancelling the ability provided for anyone to instigate a false marking suit. The person infringed of right can claim compensation only to the extent of injury suffered.

Virtual marking Provisions
The AIA has updated the patent law to suit the digital age by recognizing virtual marking. Virtual marking involves marking products with reference to a website which the public can access. With virtual marking, patent holders can now update the markings on an entire depot list just by a click of a mouse for renewal and fresh patent issuance.

Nevertheless many limitations and constraints of time involved in implementing the innumerable changes, specially the switch to first to file rule, the Act will have far-reaching benefits. The new law will definitely boost the American companies and inventors who had endured costly delays and unnecessary litigation, to concentrate more on innovation and job expansion.

Smith Leahy America Invents Act – A major reform to Patents Law


Darius C. Gambino and Lisa Lint, The America Invents Act In Action, The Legal Intelligencer at

Joan T. Kluger, Patent Prosecution Strategies Under The Smith Leahy America Invents Act, Intellectual Property Alert, September 2011 at

Leahy Smith America Invents: Act Potential Effects of Patent Litigation, WSGR Alert, September 2011 at

Smith Leahy America Invents Act – A major reform to Patents Law

Article by Lydia Chitra Jacob