According to the Washington Post, and supported by comments from Robert Stoll, USPTO Commissioner for Patents, during the September 14,2011 webinar hosted by Foley & Lardner LLP, President Obama is expected to sign the Leahy-Smith America Invents Act on Friday, September 16, 2011. That will make September 16, 2011 the “date of enactment,” triggering some immediate changes to U.S. patent law, and starting a short clock for other changes.

Immediate Changes–Effective September 16, 2011

As I outlined in this article posted September 5, 2011, a number of changes take effect on the date of enactment, including:

  • Changes to requirements for standing to bring false marking cases and marking requirements—effective immediately and applicable to pending proceedings.
    This means that standing will no longer exist for virtually all pending false marking suits, requiring their dismissal
  • Limitations on joinder of defendants in infringement actions—effective immediately and applicable to all actions commenced on or after the date of enactment.
  • Best Mode violation no longer a basis for invalidating a patent—effective immediately and applicable to proceedings commenced on or after the effective date.
  • Changes to Prior Use Defense—effective immediately as applied to any patent issued on or after the date of enactment.
  • Change of Inter Partes Reexamination standard—effective immediately and applicable to any requests for inter partes reexamination filed on or after that date, the standard for inter partes reexamination will change from “substantial new question of patentability” to “a reasonable likelihood that the requestor would prevail” with respect to at least one of the challenged claims.
  • Appeal of Board decisions in ex parte reexamination to Federal Circuit only—effective immediately and applicable to any pending or subsequent Board appeal.

10 Day Changes–Effective September 26, 2011

Just in time for the USPTO’s new fiscal year (which starts October 1), a fee surcharge and Track I examination will take effect and generate additional revenue–hopefully the USPTO will be permitted to spend it!

  • 15% surcharge will be added to all patent-related fees, including patent maintenance fees.
  • The USPTO is to set a Prioritized Examination Fee of $4800/$2400.
    (I expect the USPTO to quickly implement the “Track I” prioritized examination program, in accordance with the regulations set forth in the April 4, 2011 Federal Register Notice.)

60 Day Changes–Effective November 15, 2011

While Applicants are adjusting to the new few structure, they may want to confirm their e-filing skills.  As of November 15, 2011, the USPTO will impose a $400/$200 surcharge for patent applications not filed electronically.

Now What?

Some commentators have reported an increase in new patent litigation filings this week, presumably due to plaintiffs wanting to bring suit before the litigation-focused changes take effect. By the time you read this, it may be too late to file suit under the old regime!

On the other hand, Applicants with large numbers of applications/patents for which fees are due (or may be due soon) still have a few days to pay the fees before the surcharge takes effect.

Instead of playing beat the clock, Applicants willing to pay a price for expedited examination might want to wait to file their applications until the new Track I provisions take effect, which should be on September 26, 2011, or shortly thereafter. (This article from April 6, 2011 provides a refresher on the Track I examination option). 

Once we get through this immediate transition period, we can turn our attention to the other significant changes to U.S. patent law that will take effect in one year (September 16, 2012) or eighteen months (March 16. 2013).