The biggest changes to US patent law since 1952 have recently been signed into law by president Obama, in the form of the America Invents Act.
One of the most notable changes is that the first-to-invent system will be changed to a first-to-file system. Currently, although the patent application with the first filing date is taken as the application that will be awarded the patent, this may be challenged in Interference Proceedings in which the applicant may produce evidence, such as inventors’ log books, to support an argument that the applicant was the first to invent. Under the new Act, Interference Proceedings will no longer take place, as the first inventor is no longer relevant. However, entitlement to an invention may be disputed in so-called derivation proceedings, if it is alleged that an inventor derived the invention from an inventor named in a later filed application.
A second major change concerns the 12 month grace period. Under the current system, the applicant may publicly disclose his idea, without the disclosure counting as prior art against his US patent application, providing that the application is filed within a year from the disclosure. Under the new system, the grace period will no longer apply to disclosures made by using, selling, or offering to sell a product. The grace period will, however, remain in force for disclosures, such as publications, made by the inventor within one year before filing.
The change to a first-to-file system and to the grace period conditions will take effect in March 2013.
Other notable changes include the introduction in September 2012 of a nine month period after the grant of a patent. During this period, third parties may challenge the validity of the patent in a Post Grant Review. Further, a third party will be able to submit prior art during examination of a patent application, before grant. Also from September 2012, it will become possible for the patent owner to reopen examination of an issued patent, under a process entitled Supplemental Examination. This will allow submission of previously undisclosed prior art, provided that this is done before any efforts to enforce the patent. This will be particularly advantageous during a patent enforcement action, to avoid the alleged infringer raising a charge of inequitable conduct against the patent owner for not notifying the US Patent and Trademark Office of prior art. Currently, such allegations of inequitable conduct are common, and if successful can result in the loss of the patent, although the scope for succeeding with such allegations has recently been limited by the US courts.
In another change under the Act, sales or public disclosures anywhere in the world before the filing date may be cited as prior art against a US patent, compared with previously when only such disclosures in the US counted.
Further provisions of the Act, with immediate effect, include a new “micro-entity” status for individuals or small businesses which meet certain criteria including having filed no more than four previous patent applications. Advantages include reduced fees and “prioritised examination” of an application on payment of a fee of $4,800, which will result in a decision on patentability within a year of the filing date.
Virtual marking will now be possible, permitting marking of a product with a combination of the word “patent” or “pat” with an address on the internet at which the patent number(s) may be found. This has the same effect as giving notice to potential infringers by marking a product with the actual patent number.
Other changes with immediate effect include the removal as a ground for invalidating a patent of failing to disclose in the patent application the best mode of carrying out an invention (although it is still a requirement to describe a best mode in a patent application). Meanwhile, with regard to tax strategy patents, features concerning reducing, avoiding, or deferring tax liability are no longer considered patentable subject matter under the Act.
In many ways the America Invents Act is welcome, by bringing US patent law closer to that of many other industrialised countries. In the short-term, the changes and their implications may require at least a review if not a revision of an applicant’s US patent strategy. However, in the long-term, the benefits would seem positive.