On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act into law, making the most sweeping changes to U.S. patent law since at least the 1950’s. Many of the provisions can be broadly classified into those that serve the goal of international harmonization (first-inventor-to-file), those that target patent quality concerns (pre-issuance submissions, inter partes review, post grant review), and those that seek to rein in litigation costs (limitations on joinder). This article provides a brief overview of the many different changes, their effective dates, and the USPTO’s rulemaking process.
America Invents Act Effect Dates
Different provisions of the Act take effect at different times, with some effective immediately and some not taking effect until March 16, 2013. The “default” effective date is September 16, 2012, with changes applicable to patents issued on or after that date.
The following provisions took effect September 16, 2011:
The following changes took effect on September 26, 2011:
The following changes took effect on November 15, 2011:
The following changes will take effect on September 16, 2012, most with retroactive effect:
The following changes take effect March 16, 2013:
The USPTO Rulemaking Process
While the America Invents Act sets forth the new law, the USPTO will promulgate regulations that will set forth detailed requirements and procedures to implement the many different changes. As set forth on the USPTO’s America Invents Act Implementation website, the USPTO will issue proposed rules and solicit written comments from the public during 90-day comment periods. The USPTO will take the written comments into consideration, and will issue “final” rules at least 30 days before the relevant statutes and rules take effect. This “notice and comment” period is somewhat unique to U.S. administrative law, and gives the public an important opportunity to shape the rules that will govern U.S. patent practice for years to come.
The USPTO has issued its proposed rules to implement a number of the changes that take effect on September 16, 2012, including:
(You can find my articles providing detailed summaries of these proposed rules at PharmaPatentsBlog.com)
The USPTO has yet to issue proposed rules to implement the new Inter Partes Review and Post-Grant Review proceedings, but is expected to do so very soon. The USPTO is expected to issue proposed rules to implement the First-Inventor-To-File and Derivation provisions later in 2012.
The Months Ahead
The recent and upcoming changes to U.S. patent law are far-reaching, and will impact filing, prosecution, litigation and licensing strategies. While the international patent community can look to U.S. colleagues for guidance, international stakeholders should not wait to understand the changes that lie ahead, and should begin now to develop strategies for pursuing and protecting their U.S. patent rights under the new regime.