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Tag Archives: America Invents Act

Prioritized Examination of Patent Applications Under Leahy-Smith America Invents Act

The Leahy-Smith America Invents Act ("AIA") was enacted on September 16, 2011. The changes implemented by this Act are wide-ranging and significant, and different provisions have different effective dates, with many taking effect September 26, 2011, September 16, 2012, or March 16, 2013. We will be providing additional information in the coming weeks and months.…

Is Patent Reform Finally On Its Way?

There was much excitement when the U.S. Senate overwhelmingly passed (95–5) the America Invents Act (formerly titled the Patent Reform Act of 2011) (S.23 or AIA), on March 8, 2011. The America Invents Act  This legislation represents a major patent reform initiative that has been under congressional debate for at least six years and is quite possibly the most significant patent reform since the 1952 Patent Act. This legislation rewrites, among many other things, who is entitled to a patent when two or more entities seek protection for the same invention, when prior art is available for novelty and nonobviousness determinations, and what is available to a third party who wants to oppose a patent.

First-to-File: When two or more entities seek patents for the same invention, current law awards the patent to the entity that can prove it was the first to invent. Under the AIA, the patent would be awarded to the first-to-file a patent application. Proponents argue that this is more efficient because it eliminates costly and time consuming procedures called interferences and aligns U.S. law with other industrialized countries. Opponents argue that this favors large companies over small companies and independent inventors who do not have the resources to win a race to the patent office. To somewhat address these concerns, the AIA allows for a derivation claim (either in court or the Patent Office) when the first-filer “derived” their claimed invention from the other. Even with these derivation claims, however, the AIA appears to favor large companies who are active in patenting innovations.

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