Changes to United States Patent Law

This article was included in our Autumn/Winter 2011 edition of Inside IP magazine.

On Friday the 16th of September 2011, US President Barack Obama signed into law the America Invents Act (also known as the Patents Reform Act of 2011) introducing a number of substantial changes into the US patents system. The legislation provides the most extensive change for almost sixty years, and has an effect of increased harmonisation of the US's patent laws with those of other countries, particularly those found in Europe. For a long time, the US has had a markedly different approach from most of the world’s industrial nations to a number of substantive aspects of patent law and, at a time where harmonisation of patent law is a key issue on the agenda for the global intellectual property community, the changes are being welcomed outside the US. In his keynote speech at the Intellectual Property Owners Annual Meeting in Los Angeles, the deputy director of the World Intellectual Property Organisation, James Pooley, voiced his approval, although some US commentators continue to argue that the legislation is detrimental to US inventors.

The most far-reaching changes of the America Invents Act lie in the revision of the requirements that an invention is required to meet in order to be deemed novel. The US has operated a “first-to-invent” system, in which the date that an invention is made, rather than the patent filing date, was the point at which novelty of an invention was assessed, for a great many years. This system has provided a safeguard against organisations who had limited resources to put towards preparation of patent applications by ensuring that patent protection could be secured if an earlier invention date could be demonstrated, in priority to a competitor who conceived the same invention at a later date, but who filed a patent application sooner. Critics of this system argue that it is often difficult to establish the exact date of conception of an invention, which sometimes leads to the relatively complex process of “swearing behind” documents that would otherwise be prior art and also occasionally leads to interference proceedings. The new patent system brings in a “first-inventor-to-file” system, which is the basis of patent systems in Europe and Asia, and therefore will generally make life easier for applicants from outside the US.  The change to “first-inventor-to-file” takes effect 18 months after enactment of the legislation, i.e. early in 2013.

There are two other significant points to note with this change in law, the first of which is that a bar to novelty is provided if the invention is made available to the public in any way before the patent filing (although a limited grace period is provided, as is discussed below).  The second point is that foreign (non-US) patent filings will be, from their filing date, full prior art (i.e. citeable for novelty and inventive step) against US patent applications, whereas, in most of the world, including Europe, such prior art is a novelty only bar to patentability.

Another aspect of US patentability law which has differed from those of many other countries is the existence of a one year grace period prior to filing of a patent application, within which certain disclosures of an invention were to be excluded from the state of the art. The grace period provided inventors with an opportunity to develop their invention prior to filing a patent application, since public use or sale of the invention inside the US up to one year before the patent filing did not prejudice the patent application.  Under the new law, only certain disclosures made by the inventor, or by those who had obtained the subject matter of the invention directly or indirectly from the inventor, are not novelty-destroying if made within the year preceding the patent filing. The grace period is therefore weakened under the new provisions, since independent public use or sale by third parties in the one year period will be a bar to patentability.

The America Invents Act also introduces a number of options for third parties to challenge the validity of a US patent. Firstly, third party submissions during prosecution of a US patent application can now include arguments against patentability, whereas these submissions were previously restricted to identification of relevant documents. Secondly, within nine months of the grant of a US patent, a third party may file a petition for a Post-Grant Review, which may include any legal challenge to the validity of a claim with the exception of best mode challenges.  This is broadly similar to the opposition provisions for attacking a European patent under the European Patent Convention. Such challenges are to be resolved by the US Patent and Trademark Office (USPTO) quickly, within one year. After nine months, petitions for Inter Partes Review are available but these are restricted to grounds of novelty and obviousness based on patents and printed publications. It is expected that these provisions will allow a greater proportion of validity challenges to be resolved by the USPTO without recourse to the courts.

Other important changes introduced by the Act are numerous and diverse, and include for example: (i) the establishment of a Patent Trial and Appeal Board, (ii) USPTO fee-setting provisions, (iii) an option for applicants to buy accelerated examination, (iv) a restriction on the extent to which false marking suits can be brought, and (v) an expansion on the availability of prior use defences against infringement allegations.

The changes will be introduced at various time periods running from the date at which the America Invents Act was enacted, the majority taking effect after 12 or 18 months. In addition to implementing these changes, the USPTO also intends to recruit more patent examiners so as to reduce the large backlog of cases waiting to be examined and accelerate the prosecution of US patent applications. Together with these legislative changes, it is hoped that the new American patent system will be more efficient and cost-effective for applicants, and will enable simplified global filing strategies.

Jonathan Hewett 21 Sep 2011

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