America Invents Act: Patent Overhaul Becomes Law

The United States Senate voted 89-9 in September to pass legislation to make sweeping changes to the U.S. patent system, culminating a six-year effort on patent reform. President Obama quickly signed the bill into law on September 16th.

The legislation fundamentally alters how inventors and companies are awarded patents. Most importantly, the legislation converts the U.S. to a “first to file” system effective September 16, 2013. The first to file system awards a patent to the first person to file a patent application in the case of conflicting patent applications, while the prior “first to invent” system awarded the patent to the first person to invent.

Proponents say the changes bring the U.S. in line with European and Asian countries, which currently award patents on a “first to file” basis. They say it will eliminate costly legal disputes over who invented something first that stem from the current “first to invent” system. Some small businesses and inventors opposed the change, saying individual inventors will be disadvantaged because they don’t always have the financial and legal resources to fully develop their inventions and swiftly file patent applications.

The legislation also institutes new rules that allow third parties to challenge patents after they are awarded, but maintains a one-year grace period for allowing inventors to file applications after publicly disclosing their invention. The reform also gives the U.S. Patent and Trademark Office (USPTO) authority to raise its own fees. This step is supported by many companies and industry groups, which have expressed frustration that the patent office is underfunded, understaffed and backlogged.


About Boyle Fredrickson

Established in 1999, Boyle Fredrickson has grown to become Wisconsin’s largest intellectual property law firm. You’ve got ideas, we protect them.

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