Considerations in light of US Patent Reform

February 2013

Executive Summary
On 16 March 2013, US Patent Law will change from a “first-to-invent” (“FTI”) system to a “first-inventor-to-file” (“FITF”) system.   This change benefits inventors who are the first to file their patent applications, rather than inventors that are the first to invent.  The FITF system also means an increase in the scope of prior art that may be used against a US patent application.  It may be preferable in many cases for clients to file new applications in the US before 16 March 2013, to benefit from the old law.   Where US patent applications are likely to be filed in the next twelve months (or international applications that will ultimately be filed in the US), we will probably recommend filing such applications before 16 March 2013. If this is relevant to you, please contact your usual representative in HGF to discuss.  The following note explains in more detail:  

Details
On 16 September 2011, President Obama signed the Leahy-Smith America Invents Act (“AIA”) which had the aims of promoting innovation, improving patent quality and streamlining application processing at the USPTO.  It also means US Patent Law will be more aligned with other jurisdictions including the UK and Europe.  The FITF system will only apply to US applications and patents that contain a claim to subject-matter having a priority date of 16 March 2013 or later. Once an application is subject to the FITF system, it is not possible to re-enter the old system by cancelling a claim. 

Broadening of Prior Art - Under the AIA, any public use, sale or knowledge of the invention anywhere in the world before the priority or filing date of a US patent application will now constitute prior art against that US patent application.

Grace Period - Under AIA, the grace period will be limited only to the inventor’s own work.   Therefore, disclosures made one year or less before the priority date of a US application, provided they are made by the inventor or someone who obtained the subject matter from the inventor, will not prejudice the application.

Post Grant Review - Under AIA, third parties can initiate “post-grant” review of certain granted patents within 9 months of grant.  Any patent granted under the old law cannot be challenged under the new post grant review procedure.

Fee Changes - Under AIA, new patent fees will take effect on 19 March 2013, immediately following the 16 March 2013 switch from a first-to-invent to a first-to-file regime under the AIA.  In most cases fees will be increasing, but clients may benefit from the old fees by paying early.

In order for us to advise if clients should consider filing a new US application or take advantage of continuing the prosecution of a patent application under the US current “first-to-invent” system, we suggest they contact us prior to 22 February 2013 in order for us to give timely advice. 

Contributors:  Mark Lunt and Estelle Senior

For further advice, please contact your usual HGF representative with your query.