Patent reform legislation brings sweeping changes

By Rick Boyd
September 20, 2011

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (“AIA”), the most sweeping legislative patent reform in 59 years.  While many provisions will not take effect until September 2012, the AIA mandates an immediate 15% surcharge (effective September 26, 2011) on most typical patent-related fees for all applicants.  Further, patent applications filed via paper are subject to an additional $400 fee beginning sixty days after enactment -- November 15, 2011.  As one bright spot, newly defined ‘micro-entities’ will soon enjoy a 75% reduction in most typical patent fees.

The AIA also changes the U.S. from a First-to-Invent to a First-to-File patent system, initiating a race to the patent office and moving the U.S. toward harmony with the patent systems of most other nations.  The AIA also eliminates the one-year filing grace period for certain types of public disclosures, requiring greater pre-filing care by applicants.  Along with the higher patent service fees, these changes seem to favor applicants with more resources at their disposal, e.g., corporations and institutions, that can afford to quickly convert concepts into filed applications.

The AIA grants fee-setting authority to the USPTO for a limited time, and we expect to see that authority exercised in the form of higher fees as soon as administratively allowed. Eliminating the currently onerous backlog of patent applications awaiting examination, and reducing throughput time for patent examination, are the stated reasons for increasing USPTO revenue.

The broad scope of the AIA includes other changes too numerous to list here, some of which will likely affect our recommendations not only for patent applications, but also for employee-employer agreements, mergers and acquisitions, and non-disclosure agreements.  Ater Wynne is currently studying the scope of the AIA, and will prepare further information and guidance for our clients shortly.


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