United States makes significant changes to its patent law

The long awaited reforms to the US patent law (The ‘America Invents Act’) were passed by the Senate on 8 September 2011 and have now been signed into law by President Obama.  These reforms represent some of the most significant changes in US Patent law in the last 50 years.

It is widely acknowledged that the proposed reforms will have a significant effect on the way patent law is conducted in the US, and will aid in harmonizing the US Patent Office (USPTO) with other major patent filing bodies such as the European Patent Office. Philip French, Head of Biotechnology at Appleyard Lees said ‘These changes will make it easier for foreign applicants to get US patents, in particular the change to a first to file system and the significant modification to the best mode requirement’.

The major changes set to be implemented are:

1)           movement from a first to invent to a first inventor to file system;

2)           the scope of what is regarded as prior art will be widened;

3)           the post grant review system will be changed; and

4)           there are changes to the best mode requirement.

First to File

Currently, the US is unique in that it is the first to invent who has the right to the patent rather than the first who files an application at the patent office.  This will now change to a first to file system, although this does not take effect for 18 months, i.e. 16 March 2013.  The interference process which allowed third parties to challenge a patent filing if they considered themselves the first to invent will no longer be available.  However, a new procedure, ‘Derivation Proceedings’ has been introduced.  Derivation proceedings will allow petitions to allege that an inventor named on an earlier application derived the claimed invention from the inventor of the current application, as long as the petition is filed within a year of publication of the claims to the invention.

Prior Art

The scope of what may be considered to be prior art in the US will change.  The main changes are:

• Sale / offer for sale – under the existing law, it is only sale or offer for sale in the US which is novelty destroying.  On or after 16 March 2013, sale or offer for sale anywhere in the world will be novelty destroying.
• One year grace period – this is maintained for ‘disclosures’ by the inventor, or on behalf of the inventor but if the inventor sells, offers to sell or makes public use of the invention within 12 months before filing of an application this will, on or after 16 March 2013, be novelty destroying.  However, It is unclear how the word ‘disclosure’ will be interpreted by the US Courts.

Post Grant Review System

A new post grant review will be available to allow third parties to challenge the validity of a patent under any statutory grounds.  This is available within nine mouths of patent grant or reissue.  This is only available for patents filed under the first to file system and will be available 16 September 2012.  After 9 months, a third party could still challenge the patent but this would use the inter partes review procedure.

Best Mode

One of the key requirements in filing a patent application is that the applicant needs to disclose the invention so that the skilled man can practice it.  In most justifications this requires the applicant to exemplify the invention in sufficient enough detail so the skilled man can practice the invention across its entire scope.  In the US, there is a further requirement in that the applicant must disclose the best way of practicing the invention.  Previously the non‑disclosure of the best mode of invention was a ground for invalidation. However, now non-disclosure of the best mode is not a ground for invalidity but applicants will still be required to disclose the best mode of the invention to satisfy the US Patent Office.  This applies to all litigation commenced on or after 16 September 2011.

Other Changes

A number of other changes are contained in the ‘America Invents Act’, these include:

• All US fees will increase by 15%;
• Creation of a new micro-entity status (with a reduction of 75% in fees) for entities with a gross income not exceeding three times the reported median household income for the previous calendar year and 5 or fewer patent applications.  For 2011, gross income cannot exceed about $150,000.
• Prior user rights – this defense to infringement will now extend to all technology, previously it only related to business method patents.  However, this cannot be used for patents owned by higher education establishments.

If you have any questions relating to this, or any other intellectual property subjects, please contact Philip French or any other of the Appleyard Lees attorneys.  More information can also be found on the US Patent Office website.