Important changes to the patent law in the USA are occurring. On 16 September 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act (AIA), in a bid to encourage innovation and to create more jobs. The AIA represents the most significant change to US patent law since 1952 and, in many aspects, brings US patent law into harmony with the patent law of many other jurisdictions around the world, including Europe. Whilst the intricate changes are still being identified and evaluated by patent attorneys, lawyers and the like across the globe, here are just a handful of the following headline points that are noted:
- The AIA includes a fundamental shift from a “First to Invent” to a “First to File” system.
- As a result, ‘Interference proceedings’ are repealed and assessments for patentability are simplified, especially what constitutes prior art.
- The applicant need no longer necessarily be the inventor, it can be the assignee.
- The one-year grace period for disclosure by the inventor remains largely unchanged.
- The AIA introduces a post-grant challenge procedure, similar to the ‘Opposition’ procedure of the European patent system.
- Failure to disclose a ‘Best Mode’ of operation/structure of the invention is no longer a reason for invalidating a patent or rendering it unenforceable.
- To foster collaborative work, collaborators’ prior patent applications shall not constitute prior art, even for novelty purposes.
- Satellite offices of the US Patent and Trademark Office are to be established in order to increase the capacity for processing patent applications.
Most of the new provisions will have been put in place within 1 year of the date of enactment of the AIA though various transitional provisions will apply.
If you have any questions about the effect of this change on your US patent application, please do contact us.
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