On September 16, 2011, President Obama signed, and thereby enacted, the "America Invents Act."  The America Invents Act is the most sweeping overhaul of the US patent system in several decades.  Generally speaking, the America Invents Act touches on a wide variety of patent law issues, including moving from a first-to-invent to a first-to-file system, patent application fees, post grant review procedures, patent infringement litigation procedures, the best mode requirement, submission of prior art to the patent office, the ability of assignees to apply for patents directly, patentability of tax strategies, false marking, and fee diversion from the US patent office.

It is also important to remember that, while the America Invents Act was enacted on September 16, 2011, the individual provisions of the America Invents Act go into force at different times.  While some of those effective dates will be referenced in this chapter, the appendices include a detailed table from the US patent office showing the effective dates for each of the respective provisions in the America Invents Act.

As stated by Patently-O, one of the most visited patent law websites, the following are a sampling of the effects of the American Invents Act:

·        Eliminate a patent applicant's ability to swear-behind prior art based upon prior invention

·        Grant rights to the first-inventor-to-file a patent application

·        Create an additional post-grant opposition program

·        Eliminate the one-year grace period for third-party disclosures

·        Provide the PTO with some additional ability to set its own fees and to spend the fees collected

·        Make it easier for corporate patent owners to file applications associated with non-cooperative inventors

·        Eliminate best mode failure as a litigation defense

·        Eliminate the incentive to sue for false patent marking

(Patently-O, August 17, 2011)

Kevin Afghani, noted Patent Attorney, in the “From Vision to Patent Manual”