Changes in the US patent laws : Key points for inventors

The US Congress signed Leahy-Smith America Invents Act (hereinafter AIA) into law on September. The new law results in several significant changes to US Patents system since 1952. We present some of the significant changes being implemented in the US patent practise in this article.

Prioritized fast track examination

A new prioritized fast track examination system is being implemented under which applicants can request for a prioritized examination of their application by requesting the USPTO within 12 months of filing application. The fee for prioritized examination for small entities is $2400 and is currently limited to first 10000 applications per fiscal year. One benefit of having prioritized examination over accelerated examination is that no supporting search or examination report is required to be submitted to patent office. The new system is applicable to divisional, continuation and continuation-in-part of PCT applications as well.

Also, a new fee structure is under consideration, which includes a new category of applicants called “Micro entities”. The new fee structure may not be implemented before March 2013. We will be sharing more details on this in the upcoming articles.

First to file to replace first to invent

If two applicants apply for two separate patents for the same invention, the first applicant’s patent application can be used to reject the second applicant’s claims, even if the second applicant can prove they invented it first. This is the most significant change brought about by AIA and its impact on patent filers from other countries is yet to be seen.

Supplemental Examination of patent applications

Supplemental examination is another way introduced by AIA to challenge patent applications. As per the provisions of this section, any person from the public may ask the examiner to consider prior art against an application under examination. The objection can be raised before the notice of allowance is issued or six months after the application is published. The requesting party is required to pay a fee (approx. 180 USD) at the time of submitting prior art.

New Post grant review procedure introduced

A new post grant review procedure, similar to Indian and European laws have been introduced and is effective from 16 September, 2012. As per this section, any person can challenge the validity of a patent within nine months from the date of issue. The party proceeding with post grant review is required to show that at least one claim of the granted patent is invalid as per the laws.

No more patents on methods of tax savings

Subject matter related to methods, processes or strategies for reducing, avoiding or deferring tax liabilities cannot be patented anymore. Although this subject matter largely falls under business methods, which in itself is debatable, the AIA clearly states that inventions pertaining to reducing, avoiding or deferring tax liabilities won’t be granted a patent.

Expanded scope of prior art

One of the major changes brought about by AIA is the expansion in the meaning of prior art under Section 102 of the US Patents Act. As per AIA, effective from March 2013, the following categories of prior art would be considered valid:

  1. If the claimed invention was available to the public before present application’s filing date.
  2. A US patent application claiming priority from a domestic or foreign patent application filed before the filing date.
  3. Prior use, distribution or sale even if done in other countries.

Conclusion

While these are few of the key changes proposed by AIA, we conclude by stating what several other bloggers in IP community have been posting over the past few months. The new reforms to Patents system brought about by America Invents Act is a mixed bag for inventors. The new act reduces the fee structures on one side but increases the threat of rampant patent filing by large corporations on the other side, owing to first to file amendment.

 

 

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