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Leahy-Smith America Invents Act

September 19, 2012

Last year, President Obama signed into law the Leahy-Smith America Invents Act (the “Act”). As the first major overhaul of the U.S. patent system since 1952, the Act significantly changes how patents are processed and reviewed. Adoption of the Act transitions the U.S. patent system from a first-to-invent system to a first-to-file system. This change brings the U.S. patent system into line with the first-to-file systems of most other countries.

On September 16, 2012, the Act’s next round of changes to the prior law took effect. These changes are summarized below.

Applicants

Under the prior law, only inventors are allowed to apply for a patent. Under the Act, any entity with a proprietary interest in an invention can apply for a patent and be considered the “applicant.”

Preissuance Submissions by Third Parties

Under the prior law, third parties may only submit prior art before the publication of an application. The Act permits third parties to submit prior art before the earlier of i) the notice of allowance or ii) the later of six months after publication of the application or the date of the first rejection.

Patent Challenge Procedures

The Act replaces the Board of Patent Appeals and Interferences and creates a new Patent Trial and Appeal Board (PTAB) to hear matters related to new patent challenge procedures. The PTAB will handle the following new proceedings that are created under the Act:

Post-Grant Review

The Act creates a new “post-grant review” procedure for challenging a patent within nine months of issuance. The procedure can be based on any ground for invalidating a patent set forth in the patent laws, and is not limited to evaluating questions of novelty and obviousness.

Business Method Review

The Act creates a special post-grant review procedure for “business method” patents. A party who is sued by a business method patent holder may request a review of the patent before continuing with the lawsuit. Business method patents are defined to include those that claim a method or corresponding apparatus for performing data processing operations utilized in the practice, administration or management of a financial product or service, but not patents for technological inventions.

Inter Partes Review

The Act replaces the inter partes reexamination procedure with a new “inter partes review” procedure. The inter partes review procedure can be used for challenging a patent after nine months have passed from issuance. The procedure eliminates the “substantial new question” of patentability standard previously used for instituting inter partes reexaminations and replaces it with a “reasonable likelihood of success” standard.

Supplemental Examination

Supplemental examination may be requested by a patent owner for an issued patent to consider, reconsider or correct information believed to be relevant to the patent. Within three months after the request, a certificate indicating whether the information presented raises a “substantial new question” of patentability will be issued by the Office. If the information presented raises a substantial new question of patentability, an ex parte reexamination procedure will be conducted.

If you have any questions about the Act or how it may impact your business, please contact:

Jeffrey M. Weinick, Co-Chair, Wolff & Samson Intellectual Property Group | (973) 530-2028 | jweinick@wolffsamson.com