On Tuesday, March 15, 2011, the United States Senate voted 95-5 in favor of passing the “America Invents Act.”  If passed by the House and signed by the President this Bill would make significant changes to the United States Patent system, most notably the priority rights of inventors set forth in 35 U.S.C. §102.  Currently, section 102 places emphasis on an inventor’s date of invention or “reduction to practice” in determining priority between similar or identical subject matter filed for patent protection with the United States Patent & Trademark Office.  The America Invents Act changes this.  Under the Act, the new section 102 will shift emphasis away from the date of invention, and instead grant priority based on an inventor’s filing date.

While this change may appear to be innocuous, if it becomes law the effects of the proposed changes to section 102 could be significant. First, the proposed amendment to section 102 would bring United States patent laws in line with the laws of almost every other country in the world, as the United States has long stood almost alone in basing priority of patent applications on invention date rather than filing date. Additionally, a significant result of this adjustment would be to permit courts to more easily resolve disputes between inventors over the priority given to other patent applications. Under the current system in the United States, patent application priority disputes often result in protracted litigation, the outcome of which relies heavily on factual considerations, and often requires a finder of fact to weigh the credibility of witnesses and their testimony. Conversely, under a first-to-file system, disputes may be more easily resolved as the patent can be awarded based on the objective data by simply determining which inventor was the first to file a patent application.

While the reduction of contentious disputes relating to the priority of patent applications at first blush appears to be a worthwhile goal, the change to a first-to-file system is not without potential adverse consequences. Many who are opposed to the America Invents Act’s proposed changes to section 102 quickly will point out that the high costs associated with drafting patent applications, and navigating the patent prosecution process creates a significant disadvantage or even barrier to small businesses and individual inventors. Recognizing this potential drawback to the new law, the America Invents Act mandates that Congress study how the bill will affect small businesses. Specifically, section 23 of the Act requires that Congress study “how the change would affect the ability of small business to obtain patents and their costs of retaining patents; whether the change would create, mitigate, or exacerbate any disadvantage for applicants for patents that are small business … and whether the change would create any advantages for small business applicants.”

The America Invents Act soon will go before the United States House of Representatives. Supporting the legislation are corporations such as Mobil, IBM, Microsoft, and General Electric, while Apple, Cisco, and Dell have indicated that they oppose this legislation. Based on the size and strength of the players on each side of this discussion, it is apparent that members of the House of Representatives will soon find themselves caught in the middle of what may be a fierce debate over the future of United States intellectual property laws. Given the wide majority by which the America Invents Act passed in the Senate, however, it seems likely that this law will also pass in the House in some form that is similar to the version passed by the Senate.