Contributed by Lee Kim, Esq.



The America Invents Act has been signed into law by President Barack Obama today (September 16, 2011).  The effective date for many provisions is September 16, 2012.  Some provisions are effective immediately and still others are effective 10 days after the date of enactment.

The America Invents Act reforms the U.S. patent system.  Key points of the legislation include the following:

1. First-inventor-to-file (instead of first-to-invent) (effective March 16, 2013)

2. Elimination of best mode requirement (effective immediately)

3. Establishing a procedure for petitioning post-grant review of patents (if filed not later than 9 months after the date of the grant of the patent or the issuance of a reissue patent) (effective September 16, 2012)

4. Limiting standing in false marking lawsuits (thereby reducing the numbers of such lawsuits) (effective immediately) (applies to all cases that are pending on or commenced on or after the date of enactment of this legislation)

5. Expansion of prior user rights as a defense to infringement (defense to infringement based on prior commercial use) (effective immediately for patents issued as early as the date of enactment of this legislation)

6. Filing by other than inventor (a person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent)

7. Surcharge (15%) added to all patent related fees (effective after 10 days of effective date of this legislation)