On November 30, 2012, Representative Lamar Smith introduced H.R. 6621 to “correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.”
The act seeks to provide a number of technical corrections to a variety of issues, including:
- eliminating a 9 month dead zone for inter partes review allowing inter partes reviews to be filed at any time for applications with an effective filing date before March 16, 2013;
- extending the time for filing the inventor’s oath or declaration until the payment of the issue fee;
- eliminating the prohibition on post grant review for reissue patents with narrowing amendments;
- clarifying the standards for initiating derivation proceedings;
- clarifying the calculation for patent term adjustment; and
- repealing 35 USC 373, which restricted the types of inventors or applicants that could file PCT applications at the U.S. Patent Office.
One “Technical Correction” that has gained a lot of attention is the elimination of 35 USC 154(c)(1). For applicants that had an application filed prior to June 8, 1995, this section provided that the patent term would be the greater of 20 years from filing or 17 years from issuance. As a result, applications that were filed before this date and that issue today have a 17 year patent term going forward. The proposed amendment will eliminate this 17 year option if these patent applications are still pending one year after enactment of the act. The apparent objective is to eliminate the enforceable term of submarine patents.
Gibbons will continue to monitor any developments surrounding H.R. 6621 and provide additional information in future posts.
Christopher H. Strate is an Associate in the Gibbons Intellectual Property Department.