As we advised previously, on September 16, 2011, the President signed the Leahy-Smith America Invents Act, the most comprehensive overhaul of the U.S. patent system in more than 60 years. Most of the changes required by the Act will take effect on March 16, 2013. Some of the most important of these changes are described below:
The Act converts the U.S. patent regime from a first-to-invent system to a first-inventor-to-file system. Under a first-inventor-to-file system, patent rights to a patentable invention are awarded to the inventor with the earliest effective filing date, not necessarily to the inventor who first conceived the invention. This change is effective for all patent applications that are filed on or after March 16, 2013, and will likely result in an increase in the number of provisional patent applications filed by inventors seeking the earliest possible effective filing date.
Under the old law, patents and publications made anywhere in the world, and public uses and sales of an invention occurring in the United States more than one year before the effective filing date of a patent application directed to the invention comprised “prior art” against which the patentability of the invention was measured. Patents, publications, public uses and sales within one year of the filing date were not considered “prior art”, nor were public uses and sales made at any time outside the United States. However, the only exception to “prior art” available under the Act are public disclosures made by or on behalf of the inventor himself which occur no more than one year before the filing of the patent application. This may have the effect of encouraging public disclosures of inventions (or the filing of provisional patent applications), especially in cases where an inventor suspects that a competitor is engaged in research similar to that which led to his invention. In such a case, an early disclosure by one inventor would, if followed within a year by a patent application, preclude another inventor from obtaining a patent on the same or a similar invention.
The America Invents Act also provides three ways a third party can challenge a patent (or patent application) in the U.S. Patent and Trademark Office. The first way allows third parties to submit printed publications to the Examiner reviewing a patent application after it has been published but before the application is allowed. Such submissions must describe the relevance of any publication submitted to the patentability of the claimed invention. The second way allows a third party to request post-grant review of an issued patent within nine months after the patent issue date. This post-grant review may be based upon any grounds allowed under the law to challenge the validity of a patent claim. The third way allows a third party to commence a limited review proceeding after the nine-month post-grant review window closes. These proceedings are limited to patentability challenges based only on prior art patents and printed publications.
Who May Be An Applicant
Whereas the old law required patent applications to be filed in the name of the inventor (or inventors), the Act allows patent applications to be filed in the name of an assignee of the inventor’s rights in an invention.
Prior User Defense
The Act creates a “prior user” defense to infringement for any party that first invents and commercially uses, but does not seek to patent, an invention. This may have the effect of encouraging inventors of methods or processes that can be kept secret to attempt to protect their inventions as trade secrets.
Virtual Patent Marking
The Act allows a patent owner to meet the patent marking requirement by placing the word “Patent” or the abbreviation “Pat.” on the patented product with an internet address that is free to the public and associates the product with the relevant patent number or numbers. This provision will make it easier for patent owners to mark products that are covered by multiple patents having different issue and expiration dates.
Prior law allowed small entities (generally, those with fewer than 500 employees) to pay fees to the Patent and Trademark Office at 50% of the regular (or “large entity”) rate. The new law creates a new “micro-entity” status for institutions of higher education, and for other patent applicants that: (a) have fewer than 500 employees, and (b) have not been named as inventor on more than four previously filed patent applications, and (c) did not in the most recent calendar year have a gross income exceeding three times the median household income. Micro-entity applicants are entitled to pay fees at 25% of the regular rate.
The Act substantially increases most of the fees payable for filing patent applications and maintaining issued patents. Some of these fee increases will not take effect until January, 2014.
If you have any questions about the new Act and how it might affect you, please contact any of our intellectual property attorneys.