On 16 March, the most significant overhaul to the United States Patent System took effect. Although it has been over fifty years since the United States Patent and Trademark Office (USPTO) has seen any major modifications to its systems, 16 March brought with it serious changes which will profoundly impact millions of inventors, companies, corporations, scientists, research and educational institutes overnight, just to name a few.
Driving this change is the Leahy-Smith America Invents Act, signed into law on 16 September 2011 by President Obama, enacted to overhaul the US patent system with a streamlining of patent processes and a dramatic shift in procedures. The most significant change is the swap from its traditional “first to invent” system to a “first inventor to file” system, bringing America’s patent filing procedure into line with almost every other country in the world. In the past, the first inventor of the item/process detailed in the patent application would be entitled to the patent. With the new “first inventor to file” system, no one can claim priority for a patent just because they were first to invent the item/process in question. From 16 March onward, whoever files first, or the person who has the “earliest effective filing date” as the USPTO states, is awarded the patent.
An additional change to the system includes an increase in the breadth and scope of “prior art” used to challenge and nullify a patent. Geographic restrictions have been lifted and the types of acceptable “prior art” have been expanded. Now, evidence proving an invention already exists anywhere in the world through printed publications, sales or public use will effectively block the granting of a patent.
Furthermore, the “prior commercial use” defence has been expanded to include machines, manufactured items, commercial/manufacturing processes and particular item compositions. The new law stipulates that the infringer must have commercially used the subject matter in question within the US for at least one year before either the patent application filing date or date the invention was made public.
Another major change to the patent system is the new post-grant review (PGR) procedure. With PGR, a third party has nine months from the date of issuance to challenge a patent. All applicants will be open to the possibility that a competitor could petition for patent cancellation.
Lone inventors, small businesses, educational facilities and other small entities will see a 75% reduction in fees for most services provided by the USPTO. Stipulations on what it means to be a “small entity” include the following:
• must have 4 or fewer previous filed patent applications
• gross income is less than 3 times the median household income
• any entity assigned, granted or conveyed a licence in relation to your patent has a gross income less than 3 times the median household income
• Applicant is primarily employed by a higher education institution.
The final change to the patent system includes the introduction of ‘virtually marketed’ patents. Under the new system, “patent” or “pat” can now be attached to or printed on a patented item followed directly by a website address which must be made freely accessible to the public.
With such dramatic changes to the United States patent law, it is advisable to review the new system carefully and act swiftly if you prefer to have any new patent applications governed under the existing law. Otherwise, prepare to rethink your patenting processes to ensure you are correctly protecting your inventions for the future.