Senate Passes America Invents Act without Amendment

On Thursday, September 8, 2011, the Senate passed the America Invents Act without amendment with an 89-9 margin.


The bill will now go to the White House where President Obama is expected to sign the bill into law within the next few weeks.


The most notable changes that the America Invents Act will bring are:


 *transition to a first-inventor-to-file system rather than the first-to-invent system that we have currently. This is expected to take effect within 18 months following the date of enactment of this act.

* fee setting authority and the ability for the Patent Office to keep all the fees it generates.  Director Kappos indicated that this will allow the Patent Office to    begin “hiring Examiners immediately” to help address the backlog and create jobs.

* creates a post-grant review system to weed out patents that should not have been granted.


The new first-inventor-to-file system will impose a sense of urgency on inventors to file a patent application in the U.S. Patent Office at the soonest possible date in order to establish a right to a patent against all subsequent filers for the same invention.  This can be accomplished by filing a provisional patent application which can be prepared and filed in less time than normally required to file a formal, non-provisional patent application.


Upon passage of the Act, Director of the U.S. Patent and Trademark Office, David Kappos issued the following statement:


“I want to congratulate the United States Senate for passing the Leahy-Smith America Invents Act (H.R. 1249) today, and again thank Senate and House Judiciary Chairmen Leahy and Smith, as well as House and Senate leadership and many other Members of Congress for their unwavering commitment to this critical job-creating legislation….”


To read the full U.S.P.T.O.  press release, please visit

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