It is anticipated that President Obama will soon sign into law the most sweeping change that U.S. patent law has seen in a very long time, certainly during the careers of most current patent practitioners.
Among other things, the America Invents Act, H.R. 1249, will generally establish a first-to-file system to replace the current first-to-invent system, bringing U.S. law closer to that of other jurisdictions around the world.
While there have been strong opinions on both sides of the debate regarding whether the changes will ultimately help or hurt independentinventors (and small businesses, for that matter), at least one welcome change will be the addition of a new tier of reduced fees for “micro entities.” This provision and some others should take effect soon after enactment, whereas many other aspects of the Act are not slated to go into effect for at least one year, and in some specific instances, until another year and a half (i.e., in early 2013).
Subject to a particular format, the Act will also permit online “virtual marking” of a patented article, which in some cases may make it easer for patent owners to qualify for the option of pursuing monetary remedies against infringers, which generally requires fair notice to the public via patent marking. The Act will also exempt from liability the false virtual marking of expired patents that had once legitimately covered corresponding virtually-marked product(s).
The Act will also support the establishment of pro bono programs across the country to assist financially under-resourced independent inventors and small businesses.
Looking ahead, some relatively inexpensive – and previously unavailable – options for challenging and/or protesting the patent applications of others will come into play. For instance, any person, at any time, will be able to submit “prior art” bearing on the patentability of a claim. In addition, a nine-month post-grant review period will also be available for non-applicants to challenge the claims of a newly issued patent.
For more information on the status and text of H.R. 1249, click here.