America Invents Act – First to File

September 16, 2011

As most of you are aware, Congress passed the Leahy-Smith America Invents Act.  Today, President Obama signs this legislation into law during a visit to the Thomas Jefferson High School for Science and Technology in Virginia. The enrolled version can be found at 2011 CONG US HR 1249. This Act significantly reforms US Patent Law.  Plenty has been written but PLI has a great overview of these changes.  See 1058 PLI/Pat 503.  We will, from time to time cover the research angle.  Or, feel free to submit patent reform research questions to west.referenceattorneys@thomson.com.

One of the primary changes relates to the priority system, changing the US Patent system from “First-to-Invent” priority system to a “First-to-File” system.  Of course, this isn’t the first time Congress considered aligning our priority rules with the rest of the world.  Simple queries got in the FED-LH database got us as far back as 1971.  Here are the comments of H. Dale Grubb, NASA’s Assitant Administrator for Legislative Affairs:

…In commenting on this original bill, we indicated that we believe the major features to be abolishment of the one-year grace period ; issuance of a patent to the first to file an application, together with the complete elimination of interference practice ; institution of a preliminary application procedure; mandatory publication of applications during pendency ; provision for art more broadly so as to encompass use and sale outside the United States and all disclosure of knowledge in tangible form ; streamlining the judicial process for patent infringement litigation; the making of computer programs unpatentable; and the provision for optional deferred examination of applications in the Patent Office. Now, some four years later, it appears that each of these major features has been completely discarded or significantly modified.

Hearings before the Subcommittee on Patents, Trademarks, and Copyrights, May 13, 1971.  (Our search was “first to file” /10 patent in the FED-LH database).

Also, to review the progress of first-to-file over the past 5 years, try thse searches in the Congressional Bills and Legislative History databases.

patent /5 reform! & first /3 file invent (LH) 13 documents

patent /5 reform! & first /3 file invent (CONG-BILLTXT-ALL) 23 documents