President Obama signs off on amendments to Patent Act


On September 16, 2011, President Obama signed the America Invents Act (H.R. 1249) into law, legislation that drastically changes the face of patent law in the United States. The most significant portion of the legislation effectively changes the U.S. from a first-to-invent system to a first-to-file system, placing the U.S. in line with the majority of countries around the world. This means that the first inventor to file a patent application is entitled to a patent (assuming that the conditions for patentability are met), regardless of whether another first conceived or reduced the invention to practice. In other words, the change to a first-to-file system creates a race to the patent office, and inventors can no longer rely on an earlier invention date to establish priority. This change will have the greatest impact on individual inventors, small businesses, universities and non-profit institutions, which may not possess the resources to finance the preparation and filing of patent applications at early stages of development.

In accordance with the change to a first-to-file patent system, the America Invents Act includes changes that will increase the pool of “prior art” (i.e. printed publications, patents, and public use and sales activity that can be considered in determining the patentability of an invention). The new law provides a personal one-year grace period in which an inventor can publicly disclose the invention within one year of filing a patent application and such disclosure is not considered prior art. Additionally, any third-party disclosure that is subsequent to the public disclosure by the applicant/inventor is not considered prior art. [For inventors that are only concerned with U.S. patent protection, the personal one-year grace period may provide a useful mechanism to avoid some of the risk associated with delaying the filing of an application. However, many foreign jurisdictions require absolute novelty such that the grace-period will offer little to no advantage for those inventors seeking foreign patent protection.] One other change to note is that public use and sale of an invention in a foreign country is considered prior art under the new laws. The first-to-file provisions of the America Invents Act will be effective 18 months from the date of enactment and will apply to any application filed after the 18 month period.

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