Impact of the Leahy Smith America Invents Act on us Patents

The Leahy-Smith “America Invents Act” was passed in an unusual and rapid process that eliminated the addition of any new amendments. See H.R. 1249 for the complete act. President Obama signed the act into law on September 16.

The act is one of the most sweeping cleanups of patent law in the history of patent law, with several changes that creates a whole new world of getting patents or defending them.

Opponents consider the law to be a corporate handover, while those with the 700,000 patent applications or tens of thousands of patent infringement and other cases that are in a backlog may think otherwise.

PatentlyO is a law blog that has a fairly comprehensive discussion of the major areas of interest.

Establishing a first-to-file system:

This system will add clarity to the patent filing process and bring the United States into the same system that is used by most of the industrialized world. Instead of the “first to invent”, the first person who files a patent will get the patent. This prevents “inventors” from coming out of nowhere with claims that they invented the item first. Such cases are difficult to prove and can clog the system with claims that can drag on for years.

According to Inventors Digest, “In the past seven years, of more than 3 million applications filed, only 25 patents were granted to small entities that were the second inventor to file but were able to prove they were first to invent.”

Creating new patent office proceedings for post-grant review:

This means that patent filings can be challenged during the 9 months after the grant is given. The validity of a patent can be challenged and the Patent office will reexamine the case. This is expected to prevent costly and time consuming lawsuits before they happen.

Reducing the ability for anyone to file False marking lawsuit:

False marking involves labeling something as patented when it is not patented. The act restricts the statutory damage awards that the US can get, but individuals who suffer competitive damage from false marking can get compensatory damage awards. Marking a product that once was patented is not a violation.

Dealing with multiple defendants:

There have been many cases where large groups of defendants are rounded up. The act severely limits the joining of defendants and bases decisions on the nature of the defendants liability for patent infringement before allowing such joinders. That all of the defendants infringed on the same patent is not sufficient reasons for joining their cases.

Filing by other than inventor for corporations to file Oath and declaration:

This change allows corporations to file a substitute inventor’s oath when the inventor is non cooperative.


Fees were reduced for entities that are defined as “micro” or “small” entities.

Eliminating the Best mode requirement:

Actually, an inventor is still required to provide the “best mode” for getting the invention to work, but failing to provide the best mode cannot be the sole reason for invalidating an existing patent. New patents will be required to have disclosure of the best mode.

In addition, there is funding for the Patent agency as well as a program that allows the agency to put excess income into escrow. Congress will retain oversight because the agency has to get approval in order to spend the escrow money.