Intellectual Property Law: Counseling, Licensing, Litigation & Procurement

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America Invents Act

understand and prepare for the potential impact of the Leahy-Smith America Invents Act:


On March 8, 2011, the U.S. Senate voted 95 to 5 to pass the Patent Reform Act of 2011 (S. 23). It was introduced by Senator Patrick Leahy on Jan. 25, 2011, and included the following significant changes to the patent system:

  • First-inventor-to-file system
  • Post-grant opposition system
  • Post-grant review for business method patents
  • USPTO fee-setting authority and USPTO funding

On June 23, 2011, the U.S. House of Representatives approved the America Invents Act (H.R. 1249). It was introduced by Congressman Lamar Smith on March 30, 2011, and approved by the House Judiciary Committee in a 32-to-3 vote on April 14, 2011. While similar to the legislation passed by the Senate, it included a few key differences:

  • Protection of inventors’ prior user rights if they disclose inventions one year before filing patent applications
  • Extended timeline for inter partes review initiation after litigation begins
  • Longer time frame for post-grant review
  • A three-year safe harbor from liability for expired patents
  • A sunset provision for the USPTO’s fee-setting authority
On Sept. 8, 2011, the U.S. Senate approved the Leahy-Smith America Invents Act (H.R. 1249), finalizing congressional acceptance of long-anticipated U.S. patent reform.

On Sept. 16, 2011, President Barack Obama signed the Leahy-Smith America Invents Act into law.



Banner & Witcoff attorneys are available to answer questions and discuss patent reform. Media inquiries should be directed to Amanda Robert at (312) 463-5465 or

Intellectual Property Law: Counseling, Licensing, Litigation & Procurement