America Invents Act: First to Invent v. First to File System

On March 30, 2011, the House is scheduled to debate The America Invents Act, the patent reform bill passed by the Senate 99 to 5 on March 8, 2011.  There are some differences in the House patent reform bill from Senate bill S.23, but the provision that has undoubtedly generated the most debate, that is the switch from a first-to-invent to a first-to-file system, remains in the House’s proposed legislation. I recently listened to a One-Hour Briefing in which Allan A. Fanucci, Partner at  Winston & Strawn, discussed the implementation of US Patent Laws under the current 35 U.S.C. s 102(a) as compared to what the statutory bars will be under the first to file system. Here are some highlights from the briefing…

First to File (proposed for US)

  • The first party to file has the opportunity to obtain the patent
  • The earlier party’s application becomes prior art to all later applicants both for novelty and obviousness (or lack of an inventive step)
  • Exception: prior application was derived from the later filer
  • While Interferences are being discontinued except for derivation, documenting prior inventions should be important in showing that invention was not derived from others


Patent Reform Takes A Big Step Forward As The Senate Passes The America Invents Act

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, along with colleagues Courtenay C. Brinckerhoff and Liane M. Peterson, sent in this alert highlighting the key provisions of The America Invents Act.

On March 8, 2011, U.S. patent reform moved one step closer towards becoming a reality when the Senate passed the America Invents Act (S. 23) in a bipartisan, 95-5 vote. The bill includes some modification to the “first-to-file system” and removes the damages and venue provisions that were present in earlier versions of the bill.

Now the House of Representatives will have to craft its own version of patent reform, which is expected to have at least some differences vis-à-vis the Senate bill. If and when the House approves its patent reform bill, House and Senate leadership will have to reach a compromise. Although the House is expected to vote in support of a compromise bill, final passage could be blocked by a late-stage “hold” in the Senate. Thus, patent reform likely still has a long road ahead. (more…)