Patent Reform on the Way


The America Invents Act, the most significant patent reform to come out of Congress in the past fifty years, has surmounted its final congressional test and was passed by the Senate on September 8, 2011. The Act is now on its way to President Obama, who has already said he will sign the bill, and it will have a far reaching impact on almost every aspect of patent law, from how patent protection is obtained to how patent rights are enforced. While many of the most dramatic changes do not go into effect until one year from the date of enactment, an understanding of all aspects of the new law is important now for future planning.

Perhaps the most important change in the new law switches the United States to a “First-to-File” system, in which the first inventor to file a patent application for an invention is the one entitled to receive a patent. Under current law, the one who is first to make the invention is entitled to the patent, whether or not that inventor was the first to file a patent application (provided certain other requirements are met). First-to-File is generally the standard around the globe and this change attempts to harmonize U.S. patent law with international patent practice. As a result, the new standard is likely to encourage early filing of one or more provisional patent applications, perhaps at each significant step of a project’s development, in order to stake the earliest possible claim at the Patent Office.

A related change affects the “grace” period that inventors enjoy that limits the inventor’s own actions from impacting patentability. Inventors currently have one year to a file patent application after a public disclosure, use or sale of an invention without affecting the ability to seek a patent in the U.S. for that invention. The new patent reform legislation limits the grace period to the inventor's own activities and according to the text of the new statute, relates only to "disclosures," a term that has previously been interpreted in other contexts to exclude sales and offers for sale and might also exclude certain types of public use. Only printed publications (journal articles, research papers, etc.) prepared by or with the inventor clearly appear to be entitled to the grace period under the new law. Accordingly, exhibiting the invention at a trade show or offering a product for sale even a day before the patent application is filed may be enough to preclude the invention's patentability.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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