Congress Overhauling US Patent Laws

April 21, 2011

The US patent laws are undergoing a major revision, the first large revision since the Patent Act of 1952.

The US patent laws are undergoing their first large revision since the Patent Act of 1952. The America Invents Act, introduced by Senator Leahy (D-VT) on Jan. 25, 2011, was overwhelmingly passed by the US Senate on Mar. 8, 2011. It was then introduced in House of Representatives on Mar. 30, 2011, where it is still awaiting a vote.

The act would introduce reforms that bring US patent laws more in line with those of the EU. In particular, it would revise policy so that patents would be granted on a first-to-file basis, rather than on a first-to-invent basis. Under the current system, a division of the US Patent and Trademark Office settles disputes about who was the first to invent a product, in an expensive and uncertain process that puts cash-strapped academics at a disadvantage.

The first-to-file system is a less ambiguous measure of who has first claim to an invention. This system carries risk to academics, particularly if they begin the process of commercialization before filing. However, the act contains provisions intended to protect inventors, such as the ability to request a postgrant review during the first nine months after issue, and a provision allowing third parties to submit prior art during patent examination. First-to-file status is intended to remove much of the ambiguity around patent filings, and enable a more streamlined, less expensive patent-application process than the current procedure.