America Invents Act : Notes on the bill

The House Judiciary committee approved the America Invents Act (H.R. 1249) bill to modernize and reform the patent system by a vote of 32-3. This bill implements a first-inventor-to-file standard for patent approval, creates a post-grant review system to weed out bad patents and helps the Patent and Trademark Office address the backlog of patent applications.

“In order to have a healthy economy, we must have a healthy patent system. These reforms discourage frivolous suits, enhance patent quality and streamline international principles. After six years of bipartisan efforts, I look forward to crossing the finish line on patent reform.” – House Judiciary Committee Chairman Lamar Smith

Below is a summary of some of the main components in the House patent reform bill:

First Inventor to File: Creates more certainty about patent ownership by adopting a first-inventor-to-file standard for awarding patents.

Post-Grant Review: Establishes a new administrative construct called post-grant opposition that allows disputes involving patent quality and scope to be settled.

Business Method Patents: Authorizes a special ex parte reexamination of business-method patents. This process allows business method patents to be re-examined using the best prior art as an alternative to expensive litigation and helps invalidate poor-quality patents.

Third-Party Submission of Prior Art: Prevents bad patents from being awarded by permitting third parties to submit information regarding a patent application that may be relevant for the patent examiner to review.

PTO Fee-Setting Authority & Revenue Retention: Authorizes the PTO Director to establish patent and trademark fees to recover the costs of services rendered to inventors and trademark filers. Allows the PTO to retain revenue generated by these fees in order to hire new examiners and address the patent backlog.

Best Mode: Retains the best mode requirement for purposes of submitting an application, but prevents a defendant from claiming that a plaintiff failed to comply with the best mode requirement when filing for a patent.