Smith-Leahy America Invents Act to Become Law

Senate Vote Sends Patent Reform Legislation to White House

In a bipartisan 89–9 vote, the Senate has passed H.R. 1249 without amendment.  The Smith-Leahy America Invents Act will become law once signed by President Obama within the next week or so.

Voting 89-9, the Senate on September 8, 2011, passed H.R. 1249 without amendment, sending the comprehensive patent reform legislation to the White House for the President’s signature.  On this occasion, AIPLA President David Hill offered the following message to AIPLA members:

“After more than six years of work, Congress has finally passed patent reform legislation to be sent to the White House for the President’s signature. This challenging endeavor was directed to a common purpose of improving patent quality and the innovation incentives, even if there was disagreement among some on the best path to that goal. In some ways, the legislation that resulted is not exactly what I or others might have wanted, but, like all legislation, it is a compromise measure with much potential to improve the present system. 

The time has arrived now to look forward and ensure that the new law is implemented in a way that fulfills that potential, and AIPLA will lead the way with both its advocacy and education programs.  I want to express my thanks to members for their support and understanding throughout this journey, and to give my assurance that the Association will continue to work for the most effective patent system possible.”

Among other things, this long-awaited legislation converts the U.S. patent system to a “first inventor to file” standard of determining priority and establishes an expanded post-grant review procedure to permit early and economical challenges to questionable patents.  Importantly, the legislation includes a provision to give greater assurance that user fees will be exclusively available for the activities of the USPTO.

Many of the new provisions will be implemented a year after the president signs the legislation, but some will go into effect immediately.  Recent issues of AIPLA Direct review the provisions that are immediately effective on enactment (best mode, marking, taxes, fee provisions, reexamination).  One provision of wide interest will amend 35 U.S.C. 292 to eliminate qui tam actions for false marking, effective immediately upon enactment and applicable to all cases pending on, or commenced on or after, the date of enactment.  

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