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America Invents Act: Why this groundbreaking legislation may have your company examining its patent practices and procedures

After several years of debate and anticipation, the most substantial change to hit U.S. patent law in decades has come to fruition. On Friday, Sept. 16, President Obama signed the America Invents Act, a piece of legislation that has garnered much attention in the intellectual property community. Businesses and individuals filing for patents will soon need to adapt to several substantial changes in the patent system. Perhaps the most significant among these changes is the move from a “first-to-invent” system to a “first-inventor-to-file” system.

Under the old “first-to-invent” system, the first inventor of particular subject matter typically had top priority in getting the patent on it.  Under the new “first-inventor-to-file” system, the first inventor to file for the patent, regardless of whether he or she was the first inventor, will typically win the patent. In addition, use of an invention before another party files to patent it can sometimes give the “prior user” the right to keep using it in spite of the patent. The U.S. patent system has remained significantly unchanged over the last 59 years, but the increasing importance of international business has made this recent change more urgent. The Act is designed in significant part to “harmonize” the U.S. patent system with the patent systems of other countries, since the majority of the world already operates on a “first-to-file” system. Other significant modifications made by the America Invents Act include changes to:

  • third-party challenges to pending applications and newly issued patents,
  • how patent owners mark products to give the public notice of their patents,
  • limitations on “business method” and tax strategy patents, and
  • the “best mode” defense.

For more information on the America Invents Act and how it might impact how your company competes, please contact a member of the Corporate and Transactional Practice Group at Bingham Greenebaum Doll.

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