Author: Alex Frost
15 February, 2013
The Leahy-Smith “America Invents” Act was signed into law by President Obama on 16 September 2011. The law has introduced a number of significant changes to the US Patent System. The provisions of the Act have been introduced in stages, the last (and most fundamental) of which will come into force on 16 March 2013.
As of that date, the US will move from its present “first to invent” system to a “first to file” system, in keeping with much of the rest of the world. It will also revise and expand the post grant procedures available to patentees and third parties/opponents.
First to file and the US grace period
- Applications that present even a single claim that has an effective filing date of 16 March 2013 or later will be governed by the new first-to-file laws. Once such a patent claim is presented, the first-to-file laws will apply, even if that claim is subsequently cancelled.
- US applications that claim priority from a patent application (or at least one of multiple applications) governed by the first-to-file provisions also will be governed by those first-to-file provisions. Once such a priority claim is made, the first-to-file provisions will apply, even if that priority claim is subsequently withdrawn.
- As of 16 March 2013, the use of evidence of an earlier date of invention will no longer be possible in seeking to antedate a third party disclosure.
- The current 12 month grace period has been removed. Instead a much more limited set of exceptions to a general prior art rule has been introduced:
- ONLY disclosures by the inventor or derived from the inventor (e.g., by his employer) within the 12 months before the date of filing are exempted;
- Public use, sale, offer for sale ANYWHERE IN THE WORLD will now usually count as prior art in the US
- Published US patent applications and PCT applications designating the US will become citable against applications governed by the new first-to-file provisions based upon an earliest valid priority date of a disclosure at issue. This contrasts with current provisions that refer to an earliest effective U.S. filing date.
RECOMMENDATIONS: We expect that the new provisions will impact US applicants and their advisors more than overseas applicants, since many US applicants will have developed internal processes over years or decades that are optimised for the domestic first to invent laws (eg careful keeping of laboratory notebooks etc). In particular we anticipate that valid entitlement to earlier priority claims will become a much more important issue in US proceedings than has been the case in the past. Nevertheless even for overseas applicants, if you have reasons to wish pursue a US application under the first to invent rules, that application MUST be filed on or before 15 March 2013, or after that date provided a valid priority claim to a date on or before 15 March 2013 can be made WITH NO NEW MATERIAL in the later application either. Moreover, if you have already disclosed the invention and have any concerns about whether the changes to the grace period provisions will affect you, please contact your usual advisor at Boult Wade Tennant as soon as possible before the 15 March 2013 change in law.
Post Grant procedures
The new America Invents Act has introduced a number of new post grant procedures, and modified or removed (with suitable transitional provisions) existing post grant procedures. A full summary of the changes is beyond the scope of this Bulletin but in summary:
- A “post grant review” procedure, somewhat akin to the European Patent Office’s Opposition procedure, came into law in September 2012. However it only applies to patents granted under the “first-to-file” provisions and hence has an effective date of 16 March 2013. The post grant review must be instigated within 9 months of issue of such a US Patent, by a third party. The patentee may file a preliminary response to any such third party attack, and if aprima facie case for considering at least one claim to be unpatentable is made, then a full post grant review will take place.
- An inter partes review has already replaced the inter partes re-examination procedure, as of September 2012. This has broad similarities with the previous inter partes re-examination procedure, save that the inter partesreview allows for discovery to take place. The review may be based solely upon patents and printed materials. The procedure has been proposed as a lower cost, more streamlined alternative to bringing an invalidity case in the district courts.
- Ex parte re-examination will be largely unaffected by the new America Invents Act.
- Interference proceedings (where the question of which of two (or more) parties first invented claimed subject matter is considered) will continue for those cases governed by the current (first to invent) provisions, even after 16 March 2013. The more limited question of entitlement will however become a new option for applications/patents governed by the new provisions, under the so called “derivation proceedings”. Here, the USPTO will determine whether a named inventor in an earlier patent application actually derived his or her claimed invention from another inventor named in the derivation petitioner’s later patent application. If so, the PTO will also then decide if the earlier application was filed without the true inventor’s authorization.
- Reissue proceedings will also remain under the new Act, but the prior requirement to demonstrate “no deceptive intent” has been removed, thus lowering the bar for making such requests.
- Finally the new Act has introduced a “Supplemental Examination”, which permits a patentee to request additional examination of a patent by the USPTO. This allows consideration, reconsideration, or correction of information believed to be relevant to the patent, but ONLY by the patentee. Supplemental examination may be requested at any time post grant, regardless of filing or issue date, and came into force in September 2012.