America Invents Act

On September 16, 2011, the Leahy-Smith America Invents Act (H.R. 1249) was signed into law making significant changes to United States patent practice. Named for its lead sponsors, Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX),the Act switches the U.S. patent system from a "first to invent" to a "first inventor to file" system, eliminates interference proceedings, and develops post-grant opposition. 

AUTM's Position

The nation’s research universities and medical colleges applauds the Leahy-Smith America Invents Act, a thorough, balanced measure that brings the U.S. patent system, which is vital to innovation and competitiveness, into the 21st century. The Act clarifies and simplifies the patent application process and harmonizes the U.S. patent system with that of our major trading partners. These improvements enable U.S. inventors at universities and elsewhere to compete more effectively in the global marketplace. 

AUTM and other higher education associations released a statement about the bill's passage, which you can read here.

Legislative Process

  • letter from the six higher education associations collaborating on patent reform to the Senate Judiciary Committee in support of Senate passage of H.R. 1249 without amendment
  • letter from Senate Judiciary Committee members to the Senate leadership supporting the PTO funding provisions of H.R. 1249 and accompanying Appropriations Committee commitments
  • An association letter to all House members in support of H.R. 1249
  • letter from House Appropriations Committee Chairman Rodgers to Speaker Boehner and Majority Leader Cantor detailing Appropriations Committee commitments in support of PTO funding
  • comment from Senate Judiciary Committee chair and Appropriations Committee member Leahy in support of the House PTO funding procedure
  • The Statement of Administration Policy on H.R. 1249

Additional Background

Major changes to patent reexamination practices, such as the new inter parties reexamination standard, became effective immediately. Other provisions became effective the following year. Be sure to check out the USPTO implementation site. AUTM and other university associations submitted comments on proposed rules and guidance to implement the first-inventor-to-file provisions of the America Invents Act. Read the submission here.

Patent Cooperation Treaty Third Party Observation

Traditionally, the only parties involved in the international phase of the Patent Cooperation Treaty (PCT) have been the applicant and the offices conducting the processing. But the PCT observation service now permits third parties to submit observations relating to published PCT applications during the international phase of processing. The USPTO also recently implemented such a system, as part of the America Invents Act.  Read more here.

USPTO Studying Prior User Rights

The United States Patent and Trademark Office (USPTO) released two Federal Register Notices on October 7, 2011, seeking written comments and announcing two public hearings for two studies the agency is required to conduct under the America Invents Act. Congress is requiring the USPTO to study and report on the availability of prior user rights in foreign countries as well as options to aid small businesses and independent inventors in securing patent protection for their inventions. The USPTO reports for both studies are due in mid-January 2012. As part of the America Invents Act the United States Patent and Trademark Office (USPTO) is conducting a study of prior user rights.

Read WARF's response to the USPTO here.  If you have a response that you'd like to share, send it via email to