Finally - A Revitalized Patent Act

After years of debate, Congress finally passed, and the President signed, the “Leahy-Smith America Invents Act,” the most comprehensive overhaul of the patent statute since it was enacted in 1952. Set forth below is a summary of its key provisions, including the statute’s new “first to file” system, derivation, post-grant review and supplemental examination procedures, and new rules affecting litigation tactics and strategy.

First-to-File

Section 3 of the act covers the new first-to-file rule. No longer will patents be awarded to the “first-to-invent” or to an inventor who first conceived and reduced his or her invention to practice. Rather, patents will be awarded to those who are first to file an application, assuming of course that the first to file did not derive his or her invention from another. Section 102(a) will now read as follows:

(a) NOVELTY; PRIOR ART—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.