Hamilton Brook Smith Reynolds Summarizes the Provisions of the Leahy-Smith America Invents Act

October 12, 2011

Today, Scott Pierce and Mary Murray summarized provisions of the new Patent Act, the Leahy-Smith America Invents Act, as part of our firm’s breakfast seminar series. The Act was signed into law by President Obama on September 16, 2011. The Act is the most significant change in Patent Law in the United States since the Patent Act of 1952. Provisions of the Act that were discussed today include:

  • Changes in conditions for patentability, in particular key revisions to the standards for novelty and nonobviousness of an invention;
  • New opportunities for third party participation during the application process and after issuance of a patent;
  • Supplemental examination requests by a patent owner and differences from existing reissue procedures;
  • Litigation implications, including elimination of failure to describe the best mode as a defense to infringement, limitations on joinder of defendants, changes in marking patented products, expansion of prior commercial use as a defense to infringement and opinions of counsel in infringement actions;
  • Grant of a patent to the real party in interest, including changes in requirements for an inventor’s oath; and
  • Changes in U.S. Patent Office practices that include “Track I” prioritized examination, fee changes and creation of microentities.


Additional seminars will be scheduled to discuss provisions of the Act in more detail and its potential impact on patent prosecution strategies.
Please contact Scott Pierce or Mary Murray if you have any questions. Scott and Mary can also be reached at 978.341.0036.

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October 12, 2011

Today, Scott Pierce and Mary Murray summarized provisions of the new Patent Act, the Leahy-Smith America Invents Act, as part of our firm’s breakfast seminar series. The Act was signed into law by President Obama on September 16, 2011. The Act is the most significant change in Patent Law in the United States since the Patent Act of 1952. Provisions of the Act that were discussed today include:

  • Changes in conditions for patentability, in particular key revisions to the standards for novelty and nonobviousness of an invention;
  • New opportunities for third party participation during the application process and after issuance of a patent;
  • Supplemental examination requests by a patent owner and differences from existing reissue procedures;
  • Litigation implications, including elimination of failure to describe the best mode as a defense to infringement, limitations on joinder of defendants, changes in marking patented products, expansion of prior commercial use as a defense to infringement and opinions of counsel in infringement actions;
  • Grant of a patent to the real party in interest, including changes in requirements for an inventor’s oath; and
  • Changes in U.S. Patent Office practices that include “Track I” prioritized examination, fee changes and creation of microentities.


Additional seminars will be scheduled to discuss provisions of the Act in more detail and its potential impact on patent prosecution strategies.
Please contact Scott Pierce or Mary Murray if you have any questions. Scott and Mary can also be reached at 978.341.0036.

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