The Global Impact of the America Invents Act

• Author: Albert Tramposch
• Position: Director of International and Governmental Affairs at the United States Patent and Trademark Office (USPTO)
• Pages: 6-7

DECEMBER 2011

6

1 35 U.S.C. 112 requires

that the specication

“set forth the best

mode contemplated

by the inventor of

carrying out his

invention.”

THE GLOBAL IMPACT

OF THE AMERICA

INVENTS ACT

risks losing patent rights. The new provisions allow

the inventor to engage in critical negotiations with

potential buyers or investors without fear of losing

their right to a patent.

Provisional U.S. applications will continue to be

available. Since 1995, inventors who wish to pre-

serve their rights in their invention while evaluating

its potential can do so by submitting a provisional

application and paying a nominal fee (current-

ly US$250 or US$125 for small entities), thereby

establishing an internationally recognized priority

date. The inventor may, within a 12-month period,

convert that provisional application into a full U.S.

application if the invention is worth pursuing.

The America Invents Act further harmonizes U.S.

law by broadening the denition of prior art, elimi-

nating the

Hilmer

doctrine and virtually eliminating

the best mode requirement1. The reform provides

that prior art under U.S. law includes non-printed

disclosures, including oral disclosures, made avail-

able to the public anywhere in the world. New

provisions also provide an incentive for early disclo-

sure (i.e., one year or less before the eective ling

date) by insulating inventors who disclose their

inventions against third party disclosures, if the

inventor’s disclosure precedes that of a third party.

The elimination of the

Hilmer

doctrine ensures that

patents and published applications led in the U.S.

are prior art as of the earliest eective ling date to

which they are entitled to claim a right of priority.

Additionally, the earliest eective ling date is no

longer limited to only U.S. lings; it can now also

originate from a foreign ling. The new U.S. law also

eliminates the best mode requirement as a defense

in infringement actions in court and USPTO post-

grant review. As is true with all U.S. laws, these

provisions will be subject to judicial interpretation.

The new law aligns U.S. prior user rights with the

prevailing international norms by expanding the

The America Invents Act creates an innovation-

friendly, collaboration-friendly and inventor-friend-

ly patent system that will reduce costs, level the

playing eld for businesses small and large, and

spur economic growth. The new law enables a

better-resourced USPTO to grant patent rights with

greater speed, predictability, clarity, and quality. We

believe it also represents the optimal harmonized

patent system that international negotiations have

aimed for over the last 25 years.

Over the decades, patent law harmonization nego-

tiations have contemplated a system with two

major elements: (1) rst-to-le and (2) a 12-month

grace period (e.g., the draft Patent Law Treaty

of 1991). On March 16, 2013, the U.S. will transi-

tion to a rst-to-le (FTF) system to provide the

transparency that banks, venture capitalists, and

other investors need to invest in new businesses

while establishing the stability that companies

need to bring new products to globalized markets.

Congress recognized the signicance of a transi-

tion to rst-to-le and stated in section 3(p) of the

America Invents Act:

“It is the sense of the Congress that converting the

United States patent system from ‘first to invent’ to a

system of ‘first inventor to file’ will improve the United

States patent system and promote harmonization of

the United States patent system with the patent systems

commonly used in nearly all other countries throughout

the world with whom the United States conducts trade

and thereby promote greater international uniformity

and certainty in the procedures used for securing the

exclusive rights of inventors to their discoveries.”

Along with a transition to a rst-to-le system, the

America Invents Act also provides for an improved

grace period, which will help secure investment.

Under the current system, an inventor who dis-

closes an invention to a potential buyer or investor

without entering into a condentiality agreement

On September 16, 2011, U.S. President Barack Obama signed into law (P.L. 112-29) the Leahy-Smith America

Invents Act. The new law was presented to the President after six years of tireless eorts by Congress, the

Administration, and stakeholders to craft a bill that makes the most signicant reforms to the nation’s

patent system in at least 60 years. Albert Tramposch, Director of International and Governmental Aairs

at the United States Patent and Trademark Oce (USPTO), discusses the implications of this milestone in

the history of the U.S. patent system.