By Priya S. Cloutier
It appears that the Senate and Congressional version of patent law reform, also known as the America Invents Act, will be reconciled sometime in September. We have heard news that the Senate will set aside its bill in favor of the Congressional Bill. A few important changes are outlined below and you should be thinking of your future patent strategy with the following in mind. As always, please feel free to contact me with any questions or concerns.
The first-inventor-to-file priority system will take effect 18 months after enactment. It is accompanied by a personal exclusion from invalidation by the applicants' own "disclosures" within one year before filing a patent application (the personal grace period). The new law will expand the scope of prior art. Anticipatory prior use and "on sale" activities would no longer be limited in this country, and "on sale" activities would include applicants' and third party sales, regardless of whether they reveal the claimed invention.
The United States Patent and Trademark Office (USPTO) will be granted authority to set fees by rule-making. Until a new fee schedule is adopted, a 15% surcharge will be added to substantially all PTO fees, starting 10 days after enactment. You may want to pay future maintenance fees before then. The Act also includes a new $4,800 fee for preferential examination, which will enable the PTO to start its fast track examination program later this year.
One year after enactment, new procedures will be available for PTO review of issued patents. Inter Partes reexamination in the Central Reexamination Unit will be replaced by proceedings before the renamed Patent Trial and Appeal Board. Any ground of invalidity can be raised in a Post Grant Review petition, filed within 9 months of patent issue or reissue. Invalidity on grounds of prior patents and publications can be raised in an Inter Partes Review at any time when Post Grant Review is not available.