What is the America Invents Act?

The United States constitution gives the federal government the power to grant patents. Article I, section 8 of the United States Constitution reads, “Congress shall have power… to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” The first law regarding patents was the Patent Act of 1790. There were revisions to the patent law in 1793 and 1836.

The Patent Act of 1952 was a major revision of United States patent law. The Patent Act of 1952 introduced the concept that an invention must be new, useful, and non-obvious to be granted a patent. The requirement that an invention be fully described in the patent application was also introduced.

Patent Law was left relatively unchanged in the United States for the rest of the century. Despite the best efforts of congress in 1952 new questions and new legal questions created some ambiguity in the Patent Act of 1952. When ambiguities in the law were discovered the courts did their best to clarify the ambiguities. But as time passed, the ambiguities and uncertainty began to pile up. Popular opinion was that the United States needed another overhaul for the twenty-first century.

Congress’s response to the need for patent reform was the Leahy–Smith America Invents Act. The America Invents Act was signed into law on September 16, 2011 but provisions of the law did not become effective until years later. The purpose of the delay was to let patent applicants adjust to the changes in the law. The America Invents Act has 37 sections. The first section is a brief description of the law, the second section is a definition section which defines how words in the law mean, the remaining thirty four sections make substantive changes to the United States patent law. A complete review of all the sections of the law would take hours to read through, but we will review a few key changes that are worth review.

First Inventor to File – Section 3
- The United States is now a first to file patent system where priority is given to the first inventor to file a patent application.
- This is a major departure from the first to invent patent system where an inventor could still get a patent if the inventor could prove they invented an invention first.
Expanded Inter Partes Review – Section 6
- Any person other than the patent owner may petition the United States Patent and Trademark Office for inter partes review of a patent requesting to cancel at least 1 claim as unpatentable under Section 102 or 103 based on patent(s) or printed publication(s). A petition for inter partes review may be filed the later of 9 months after grant or after a post-grant review proceeding has terminated.
- TheUnited States Patent and Trademark Office may grant inter partes review of a patent where there is a reasonable likelihood that petitioner would prevail as to at least 1 challenged claim.
- Prior to this the only way to invalidate a granted patent was to file a lawsuit in federal court.
Definition of Prior Art – Section 3
- The definition of prior art is now broader under Section 102 that it was in the past.

These three changes to United States patent law are the most notable. The intention of these changes is to improve the patent grant process and bring american patent law in to harmony with the rest of the world. Most of the provisions of the America Invents Act have been in force for less than 5 years as of the date this blog was published. The intention of the American Invents Act was to overhaul the United States patent system for the new millennium, and help clarify ambiguities that had developed. Whether the America Invents Act satisfies this goal will be revealed soon.

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