American Invents Act – What’s The Deal, yo.

So America is at the precipice of major patent reform, here’s the important deals for y’all.  Congress will likely complete patent law reform legislation before the August recess. It appears that the Senate is likely to endorse most or all of the provisions in H.R, 1249, now called the America Invents Act.

There are some major changes—such as first inventor to file priority, and the new post grant and inter partes procedures—will not be effective for 12 to 18 months. Many changes, however, will be effective when President Obama signs the law or shortly thereafter.

Fees

• A 15% increase in almost all fees, including maintenance fees (SEC. 11, amending 35 U.S.C. § 41);
• A $4,800 fee for filing a prioritized application (effective 10 days after enactment) (SEC. 11(h), amending 35 U.S.C. § 41); and
• A $400 fee for non-electronic filing (effective 60 days after enactment) (SEC. 10(h)).

PTO Proceedings

• A higher threshold for requesting inter partes reexamination (until that procedure is abolished): showing a reasonable likelihood that the requester will prevail with respect to at least one claim (SEC. 6(c)(3), amending 35 U.S.C. § 312(a));
• District court review of reexamination decisions under 35 U.S.C. § 145 will be eliminated (SEC. 6(h), amending 35 U.S.C. § 306);
• Certain tax strategies will be defined as within the prior art with respect to both existing patents and pending applications (SEC. 14); and
• Calculation of patent term extension will be modified in pending applications and matters subject to judicial review (SEC. 37).

Litigation

• A prior user defense will be available with respect to patents issued on or after the date of enactment (SEC. 5, amending 35 U.S.C. § 273);
• The best mode defense will not be applicable in proceedings commenced on or after the date of enactment (SEC. 15, amending 35 U.S.C. § 282);
• Virtual marking, by reference to a website, will be effective as of enactment, including pending cases (SEC. 16(a), amending 35 U.S.C. § 287(a));
• Private false marking claims will require proof of competitive injury and the relief will be damages, and marking with the number of a patent that covered that product but has expired will no longer be false marking, effective on enactment and including pending cases (SEC. 16(b), amending 35 U.S.C. § 292(a));
• Joinder of unrelated accused infringers will be limited in actions commenced on and after enactment (SEC. 19(d), adding 35 U.S.C. § 299); and
• Issuance of patent claims directed to or encompassing a human organism will be barred as of enactment (SEC. 33).