Significant US Patent Reforms Enacted

The Leahy Smith America Invents Act (Act) was signed into law by US President Obama on September 16, 2011. The Act has been heralded as job- creating legislation that will harmonize the US patent system with international patent laws, claims that not everyone agrees with. However, most commentators see the Act as the most significant change to US patent law in over half a century. A copy of the Act and a graphic timeline for its implementation is available on the USPTO website. Amongst the myriad of changes is the migration from the current first-to-invent priority system to a first-to-file system. This transition moves the US closer to international patent norms, but there’s a catch. The new legislation incorporates an exclusion to filing rights based on pre-filing disclosures. The exclusion favours early public disclosure of an invention by preserving patent rights for the first discloser (so long as they file an application within a one-year grace period) over subsequent disclosers and applicants. A summary defining ‘prior art’ under the new legislation is available on Dennis Crouch’s Patently-O blog. Some commentators believe that the preference for early disclosure embodied in the pre-filing disclosure exclusion, combined with reduced ‘best mode’ contention and the establishment of a prior user defence to infringement, may compromise the technical disclosure provided by patents. An explanation of these provisions and the possible consequence they may have on technological disclosures is presented in this post on the Patently-O blog. Interference proceedings are eliminated with the abolition of first-to-invent priority rights, being replaced by derivation proceedings (to determine if an invention has been unfairly derived from an inventors disclosure) for disputes between applicants claiming the same invention. Gone also is the false marking, ‘qui tam’ provision that allowed any party to initiate false marking proceedings for a share of the proceeds. Now parties must establish competitive injury before they initiate false marking proceedings. The Act strengthens the ability of third parties to influence prosecution of a patent application by allowing prior art submissions during examination. A new, post-grant review procedure also allows third parties to challenge recently granted patents on any of the grounds available under examination and can be requested within nine months of grant. One of the first provisions of the Act that applicants will notice is an additional 15% surcharge on USPTO fees from 26 September 2011. Summary by: Richard Murphy