The patent laws will be changing the day that President Obama signs into law the Leahy Smith America Invents Act, which finally cleared both houses of Congress last night. Some say that these are the biggest changes to U.S. patent law since the modern Patent Act was put into place some 60 years ago. The really old guys are saying that these are the biggest changes since 1836, the date of preceding patent act. And, of course, the politicians are crowing about how the Act will add jobs.
All of this strikes me as hyperbole, particularly what the politicians are saying (but that’s to be expected). Nevertheless there will be changes, some immediate and some in 12 and 18 months.
What does it mean, in practical terms, for a user of the patent system? Here are what I think are the more important of the changes that take effect upon signing or shortly thereafter.
- It will cost more to apply for a patent. The Act authorizes the PTO to levy a 15% surcharge on existing patent related fees starting 1o days from the date of enactment and continuing until the applicable fee is reset under the PTO’s new fee setting authority. And, if you do not file patent applications electronically, it will cost you an additional $400.
- Prioritized examination, which was to have taken effect in May but was postponed due to budget cuts, should become avaiable shortly, possibly in 10 days. Requesting prioritized examiantion will cost $4800.
- Tax avoidance strategies are, as of the date of enactment, deemed part of the “prior art.” This change effectively means that obtaining patents on tax avaoidance strategies, even if they are implemented on a computer, will be difficult, if not imposssible. This change does not impact patents that have already issued, but will apply to pending applications.
- It will be more difficult to initiate a new inter partes reexamation under a change in the standard for initiating them. Requesters will need to demonstrate in the request that at least one claim is likely not patentable, rather than only show that of a substantial new question of patentability exists. Although Congress expects this to make it harder for third parties to request inter partes reexamination, we do not expect it to substantially lower the 95% grant rate.
- It will be lot harder to join a large number of defendants in a single patent infringement action in district court. Any relief requested will have relate to infringement arising from the same transaction, occurrence, or series of transactions or occurrences relating the same accused product or process.
New post grant review and inter partes review proceedings, designed to allow third parties to challenge, or narrow the scope of, patents, will not be available for 12 months. The biggest change, going from a first to invent system to a first inventor to file system will not occur for 18 months. These changes will make patenting more expensive, and necessitate at least slight changes, or sometimes bigger changes, in a business’ IP processes and strategies. Fortunately, businesses have plenty of time to prepare for them.
More on these later.
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