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WILL U.S. CHANGE ITS PATENT LAW AND FOLLOW THE FIRST-TO-FILE RULE

The United States is the only country in the world whose patent law grants the right to a patent to the person who is "first-to-invent", not "first-to-file". This means that the "first-to-invent" a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, will be entitled to the patent over someone who filed earlier, so long as the "first-to-invent" has been diligent in reducing the invention to practice after conception. By contrast, every other country follows the "first-to-file" rule which means the first person to file a patent application generally has the right to receive a patent for the invention at hand. That may be changing if the America Invents Act of 2011 becomes law. The bill aims, among other things, to harmonize US patent law with the patent law of other countries by replacing the "first-to-invent" rule with "first-to-file". The US Senate passed the America Invents Act on March 8, 2011. The bill's fate currently awaits action by the House of Representatives. Until recently it was expected to pass. But recent events bring that into question.

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Schein & Cai LLP has been a focused business and intellectual property law firm located in San Jose, California since 2003. Its practice areas include corporate law, intellectual property law (patent, copyright, trademark, trade secret, intellectual property licensing), civil litigation (including bankruptcy litigation), real estate law, and employment law. Its attorneys are licensed to practice law in California and in front of the United States Patent and Trademark Office. The firm was named as a Best of San Jose local business in 2009, one of the Top Trademark Firms in 2008 and one of the Top Patent Firms in 2010 by Intellectual Property Today®. For more information, call (408) 436-0789x201 or visit www.sacattorneys.com.

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