The U.S. Congress has passed and President Obama has signed the American Inventors Act into law on September 16, 2011. The law is the most extensive overhaul of the U.S. Patent system since 1952.
While the change to first to file is the most publicized change in the law, other changes will probably have a greater effect on patent practice, especially for Israeli companies.
The major changes that are relevant to most will be discussed below:
First to File (effective March 16, 2013)
The law will effectively switch the U.S. Patent system from the present “first-to- invent” system to a “first-to-file” system, bringing it into harmony with most other worldwide patent systems.
Acts and prior art that bar a patent will include public use, sales, publications, and other disclosures available to the public as of the effective filing date, other than publications by the inventor or those who obtained the publication from the inventor, within a one year “grace period” before filing. All these acts will be universal and public use and offer for sale anywhere in the world are now prior art.
Foreign filings of applications used for priority of US applications can be used against a third parties application as of the date the priority application is filed. These priority applications can be used to establish both anticipation and obviousness.
Interference proceedings at the U.S. Patent & Trademark Office (USPTO) for resolving priority contests among near-simultaneous inventors who both file applications for the same invention are repealed because priority will be determined based on filing date.
An administrative proceeding—called a “derivation” proceeding, is provided to ensure that the first person to file the application did not derive the invention from another inventor.
Grace Period for Filing (effective March 16, 2013)
The extent of the grace period for filing is substantially changed. In effect, first to file is also first to disclose. Under the new law, one can overcome a prior publication only when the publication is Applicant’s own or is made by another who derived the information directly or indirectly from the inventor.
The grace period thus applies only to the work of the inventor and also to those who have an obligation to assign to the same party as does the inventor (for example, where they work for the same company).
Filing by Assignee (effective September 16, 2012)
An assignee will be permitted to file an application on behalf of an inventor who assigned, or is under an obligation to assign the invention rights to the assignee, without seeking the inventor’s execution of the application.
Best Mode (effective immediately, including pending litigation)
Although the patent application will still be required to set forth the best mode for practicing the invention, the law would exclude failure to disclose a best mode from being used as a basis for invalidating a granted patent.
Marking (effective immediately)
Other than a person who can prove competitive injury, only the US government will be able to bring a false marking lawsuit.
Virtual marking, by marking the product pat., and providing a web address that lists the patents is now specifically provided for.
Marking with an expired patent number is no longer a violation.
Third Party Citations (effective September 16, 2012, but applies retroactively)
One can submit patents, patent applications and other publications as prior art for consideration against a published third party application up to the earlier of (a) the date of a notice of allowance of (b) the later of six months from the publication date of that application or the issuance of a first rejection of any claim by the Examiner. The submission must set forth the asserted relevance of the document.
In addition, after the issuance of a patent, third parties may file prior art and any statements made by the patentee before a federal court or the PTO taking a position on the meaning of the claims. A statement by the third party explaining relevance may also be filed. All these filings will become part of the file of the patent.
Post Grant Procedures
The entire range of post grant procedures is being changed. Only reissue and ex parte reexamination are unchanged. In addition to the derivation procedure described above, the following changes are made:
New Supplemental Examination
A new procedure has been introduced to allow patentees to have the USPTO consider or reconsider of information believed to be relevant to an issued patent. There is no deadline for this request. The examination will take place if the patentee raises a substantial new issue of patentability. This provision is especially important in that it will allow a patentee to cite information that was not cited during prosecution. The fact that the information was not cited earlier can not be used to declare the patent unenforceable.
Inter Partes reviews (effective September 16, 2012)
This is similar to the old inter partes reexamination with the following main changes. The standard for declaring a review has is changed from “a substantial new issue of patentability” to “a reasonable likelihood that the petitioner will prevail with respect to at least one claim.” The limitation that review is based only on anticipation and obviousness remains in force. In addition, if the petitioner is a party to a suit then he can not file a request for review. This is meant to keep infringers from delaying court proceedings by filing reexaminations.
New Post Grant Review (for most patents, effective March 16, 2013)
A third party can file a request within 9 months after issue of the patent. Unlike Europe, the declaration of the review is not automatic, but the USPTO must decide if the opponent demonstrates that it is more likely than not that he will prevail.
Note that when an Inter Partes procedures is filed the party is estopped from raising any issue in court that was raised or could have been raised in the USPTO.
A. A “micro entity” who is a small entity that has been named on less than four applications, and whose gross income is less than three times the median household income (which totals approximately $149,000) will be able to pay half the small entity fee rates.
B. The USPTO increases its fees by 15% on September 26, 2011.