Patent Law | Expert Legal Commentary

October 12, 2011

Leahy-Smith America Invents Act: First-to-File and New Pressure Points on Patent Litigation

Leahy-Smith America Invents Act of 2011

By Tom Zuber of Zuber Lawler & Del Duca and Olivier A. Taillieu of The Taillieu Law Firm

Leahy-Smith America Invents Act: First-to-File and New Pressure Points on Patent Litigation

The United States patent regime will be undergoing fundamental changes over the next 18 months with the ratification of the Leahy-Smith America Invents Act. While a majority of recent coverage has been focused on the new first-to-file provision, patent holders, litigants, and inventors in all fields must be aware of several other changes that affect one’s ability to protect and litigate patents down the line.

First-to-File Begins in 2013

The current regime of first-to-invent is set to fully expire in 2013 when the Act’s first-to-file provisions begin.  Like most other countries around the world, the United States will grant the right to file for a patent to the person who files first, rather than the current system of granting the right to the first proven inventor.

Likewise, under a first-to-file system, interference proceedings to decide priority are no longer necessary, as the first-to-file inventor is automatically the first in line and an “effective filing date” will be granted upon filing.  A grace period exists if a disclosure made by the inventor, joint inventor, or a party who obtained the subject matter from the inventor(s) occurred within one year of the effective filing date.

For startups and other small or new entities, the first-to-file system demands that new technologies and processes must be quickly scrutinized for possible patent protection.  As time is now a major factor in being awarded a patent, startups and large companies alike must have clear research pipeline procedures that quickly identify possible claims for patent protection.

Moreover, all inventors must be careful of using “disclosures” as defined under statute, as doing such can protect inventors for one year.  During this time, inventors can better evaluate possible claims before expending the resources to file an application.  However, inventors also run the risk of inadvertent disclosures starting the one-year clock, and thus should be vigilant about when and what information becomes public.

Expanding Who Can File

The Act allows an assignee of the inventor to apply for a patent for the inventor’s work.  The usual oath or declaration required by the inventor is no longer required.  Thus, employers who are designated assignees of their employee’s work product may now file for patents without the employee being available or willing.

In order to take advantage of this provision, companies must first ensure that their employees’ work product is assigned to the company.  This provision is especially helpful when former employees or contractors cannot be reached or are otherwise unwilling to make a declaration.

Attacking Derivative Claims

The Act also specifies two new procedures for attacking derivative claims.  For example, inventor A files for a patent.  Later, inventor B files for a patent, but alleges that inventor A’s claims are actually derived from inventor B’s invention. 

If the USPTO has not yet granted the patent, inventor B can ask the USPTO’s new Patent Trial and Appeal Board for a derivation proceeding, but only within one year beginning on the date of the first publication of a claim.  If the USPTO has granted the patent, the Act allows for civil action against the earlier-to-file inventor, but only within one year of the first issuance of the patent.

Thus, entities with or funded by significant patent holdings must be on guard against the limited tine to attack derivative claims, whether they are in the application process or have just been granted.

Third-Party Involvement in Pending Applications

The Act allows any person to submit certain information to the USPTO regarding pending applications through preissuance submissions.  Generally, any third-party can submit publications to the USPTO within a specified period during the application process.

Companies seeking patent protection against new patent applications can now use this provision to intervene and force the applicant to respond to the USPTO.  Conversely, companies applying for patents now face an increasing threat of third-party involvement in the application process and may face increasing demands to respond to prior art.

Third-Party Involvement in Issued Patents

Once a patent is granted, third-parties can challenge a patent through the USPTO by asking for post-grant review and inter partes review.  A party can ask the USPTO for post-grant review within nine months of the issuance of the patent by submitting a petition.  The USPTO will grant review only if the information in the petition demonstrates that the claim is more likely than not unpatentable.

Inter partes review is available after the nine month post-grant review window.  The USPTO will grant inter partes review only if the petition shows a reasonable likelihood that the petitioner will prevail on at least one of the claims in question.  The petitioner can only submit prior art in the form of patents or printed publications.  The Act limits appeals of inter partes review to the Federal Circuit. 

In both cases, a third party is not allowed to petition the USPTO if it already filed a related civil action.  Additionally, a third party cannot file for inter partes review more than one year after the petitioner is served with a complaint alleging infringement.

Like many of the other provisions, parties face short time windows to challenge a newly-issued patent using post-grant and inter partes reviews.  Also, the limited review of inter partes directly to the Federal Circuit has the potential to significantly alter the dynamics of patent litigation if parties cannot first appeal to the district court, especially if to introduce new evidence.  Further, the inability of a party to ask for review during litigation may change the general litigation strategy of plaintiffs alleging infringement, especially in light of limited appeals.

Limits on Invalidity

The Act makes the “best mode” requirement largely ineffective.  Patents can no longer be canceled or held invalid due to a failure to disclose the best mode of any claim.  Patent applicants may now be less inclined to include best mode information in patents while creating new issues for potential licensees. 

Affects on Specific Subject Areas

The act makes reference to specific areas regarding patentability.  First, the Act prohibits new patents on a claim directed to or encompassing a human organism.  Second, the Act deems the use of many tax strategies as insufficient to differentiate new claims from prior art.  Third, the Act directs the USPTO to establish a post-grant review proceeding for business-method patents. These broad limits may have significant effects in many fields, such as pharmaceuticals, tax planning, and the greater financial industry.  Further, business-method patents are also often related to internet-related fields, these specific provisions have the potential to touch many industries.


As the Leahy-Smith America Invents Act makes several changes to the patent regime of the Untied States over the next 18 months, inventors and companies must reevaluate how they deal with new inventions, as well as how to litigate possible infringement at all steps in the life of a patent.  As the changes occur one-by-one, those with any patent concerns should contact experienced patent counsel.

About the Authors

Tom Zuber is a Partner of Zuber Lawler & Del Duca, focusing on intellectual property protection and exploitation.

Olivier Taillieu is the Principal at The Taillieu Law Firm, a litigation boutique firm specializing in complex litigation.

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Tom Zuber
Olivier Taillieu

Companies Mentioned

Also See:

MDS (Canada) Inc. v. RAD Source Technologies: 11th Circuit Finds Federal Circuit Does Not Have Exclusive Jurisdiction When Patents at Issue in Breach of Contract Claim

AMP v. Myriad Genetics, Inc.: Unanimous Supreme Court Limits Patentability of Human Genes

CLS Bank Intl. v. Alice Corp. Pty. Ltd.: En Banc Federal Circuit Cements Confusion Over Patent-Eligibility for Software

Bowman v. Monsanto Co.: Growing Patented Soybeans for Replanting is Infringement

Gunn, et al., v. Minton: Supreme Court Denies Federal Jurisdiction for Patent-Related Malpractice Suit

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Companies Mentioned

Patent Law

The following companies are mentioned in Patent Law Updates:

Boston Scientific Corp.

Microsoft Corp.

Boston Scientific Scimed, Inc.

U.S. Patent and Trademark Office

Samsung Electronics America, Inc.

Stryker Corp.

Cordis Corp.

Ranbaxy, Inc.

Nokia, Inc.

SmithKline Beecham Corp. d.b.a GlaxoSmithKline

Prometheus Laboratories, Inc.

SmithKline Beecham PLC

Mayo Collaborative Services d.b.a. Mayo Medical Laboratories

Sanyo North America Corp.

Glaxo Group Limited d.b.a. GlaxoSmithKline

Scimed Life Systems Inc.

Smithkline Beecham Corp. (d.b.a. GlaxoSmithKline, plc.)

Johnson & Johnson, Inc.

United States Patent and Trademark Office

Honeywell International, Inc.

HT Window Fashion Corp.

Mylan Laboratories, Inc.

Mylan Pharmaceutical, Inc.

Ortho-McNeil Pharmaceutical, Inc.

Acumed, LLC

Stryker Sales Corp.

Teva Pharmaceuticals USA, Inc.

Glamourmom LLC

Audiovox Communications Corp.

Stryker Orthopaedics

Target Corp.

McKesson Information Solutions, Inc.

Howmedica Osteonics Corp.

Kohl’s Department Stores, Inc.

Bridge Medical, Inc.

J.C. Penney Company, Inc.

Smith & Nephew, Inc.

Cohesive Technologies, Inc.

Waters Corp.

Elizabeth Lange LLC d.b.a. Liz Lange Maternity

Association for Molecular Pathology

LG Electronics, Inc.

Quanta Computer, Inc.

Federated Department Stores

Egyptian Goddess, Inc.

Swisa, Inc.

K-Mart Corp.

Motorola, Inc.

Dror Swisa

Sears Holding Corp.

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