The new America Invents Act — hype and hope

The Leahy-Smith America Invents Act was signed into law a month ago by President Obama, after the Senate ultimately accepted the House version of the bill. When signing, Obama noted that he had “asked Congress to send me a bill that reforms the outdated patent process, a bill that cuts away the red tape that slows down our inventors and entrepreneurs, and today, I’m happy to have the opportunity to sign that bill.” See video at about 10 minutes. Be careful what you ask for.

The law has some provisions that went into effect immediately, see the effective dates, and have already generated controversy – such as the constitutional challenge to the legislative abolition of private qui tam false marking suits as an uncompensated taking of property in the lawsuit – see Brooks v. Dunlop Mfg. Co., Case No. C10-CV-04381 CRB (N.D. Cal.) – discussed here. Other provisions of the act will take some time to implement, requiring rulemaking for new procedures that may swamp the patent office’s current judicial capacity – see here. And the long-term changes to the patent law may need either immediate legislative revision or creative interpretations that must be upheld by the courts – see my post here.

Nevertheless, the new law moves the U.S. from a first-to-invent system to a first-inventor-to-file system, placing our patent system in closer alignment with those of the rest of the world – see here. With new fee-setting authority and corresponding expansions of its examination and judicial corps, the PTO may over time develop both the administrative resources it needs to process applications in a more timely and effective fashion and the expertise it needs to engage in effective substantive rulemaking, which would make it look more like other administrative agencies – see here, here, and more generally on PTO rulemaking powers here. Further, the law remains the product of compromise – such as the elimination of the best mode requirement as a basis for invalidity or inequitable conduct, see here – and given political realities perhaps it is the best that can be done substantively (if not in terms of clearer drafting) at this time. But having amended the act, Congress may be more likely to do it again (particularly if there is a President asking for it) and we should expect more revisions to the Patent Act over the next few years.