Following efforts to reform the US patent system in 2005, 2007 and 2009, US Congress has finally passed the latest attempt, HR 1249 – better known as the America Invents Act.

The legislation cleared the Senate on 8 September in an 89-to-nine vote, three months after the House of Representatives approved it with 304 votes to 117. US President Barack Obama has already indicated that he plans to follow Congress and sign the Act into law.

As a result, US patents will now be granted on a ‘first-to-file’ rather than a ‘first-to-invent’ basis: a measure that the Act’s sponsors – Representative Lamar Smith and Senator Patrick Leahy – argue will lead to reduced volumes of patent litigation.

In addition, America Invents provides for i) an extended ‘pre-issuance’ period for third parties to submit prior art after a patent application is published; and ii) a post-grant review system for re-examining patents that are challenged once they have been issued.

‘After more than six years of bipartisan efforts and negotiations,’ announced Republican Smith, ‘we have crossed the finish line on patent reform. Today’s vote is a victory for America’s innovators and job creators who rely on our patent system to develop new products and grow their businesses. These reforms constitute the most significant change to US patent law in 175 years – since the Patent Act of 1836. And, when President Obama signs the bill into law, HR 1249 will be one of the most significant job-creation bills enacted by Congress this year.’

His Democrat colleague, Leahy, added: ‘The creativity that drives our economic engine has made America the global leader in invention and innovation. The America Invents Act will ensure that inventors large and small maintain the competitive edge that has put America at the pinnacle of global innovation. This is historic legislation. It is good policy. And it is long overdue to be signed into law.’

However, the legislation has not met with universal approval among patent experts. Two days before the vote, Julie Samuels, attorney at civil liberties group the Electronic Frontier Foundation (EFF), blogged that, while America Invents ‘sounds promising’, and seems to mesh with the EFF’s ongoing aim to overturn bogus patents, applicants who did not constantly track USPTO activities would find the legislation unsatisfying.

‘Pre-issuance submissions will allow third parties to provide the PTO with potentially invalidating prior art – but only while a patent application is pending,’ Samuels wrote. ‘And the post-grant review process will allow a third party to present legal challenges to a patent – but only in the first nine months after the patent issues.’ She added: ‘If a patent applicant or owner is careful not to publicise the patent until after the nine-month period expires, or if a third party simply doesn’t learn of the patent until later, these types of challenges will be virtually useless.’


To find out more about the America Invents Act, click here