The America Invents Act (formerly The Patent Reform
Bill) was passed by the United States Senate on 8 March 2011.
Although similar patent reforms have previously failed to gain the
full backing of Congress, many commentators are predicting that
this incarnation will be passed into law in the near future.
If passed, the Act will constitute the largest patent reform
measures introduced in the United States since the 1952 Patent Act.
Amongst a myriad of changes proposed in the Act are the:
Adoption of a first-to-file patent system.
Introduction of a new opposition procedure for recently granted
Provisions for third parties submissions during
New fee setting authority for the patent office.
1. First-to-file patent system
The most anticipated aspect of the America Invents Act is the
introduction of new provisions for novelty and obviousness. The
proposed amendments will bring the US largely into line with the
rest of the world by adopting a 'first-to-file' patent
system. The novelty and obviousness provisions passed by Senate
have the effect of:
eliminating the advantage that US filed provisional
applications currently have over applications claiming foreign
priority (such as a New Zealand provisional application)
simplifying prior art determination when considering the
validity of a US patent (although there are still some
complications around prior disclosure rights)
establishing a global novelty standard for prior art
introducing advantages for formal joint research
These changes are largely beneficial for foreign applicants as
they remove some of the advantages their US counterparts enjoy
under the current legislation.
2. New post grant opposition procedure
If the Act is passed into law, the ability to challenge a
recently granted patent before the patent office will improve with
the introduction of a new post grant review procedure. The proposed
procedure allows third parties to initiate a review within nine
months of grant. A patent may be challenged on any of the grounds
available under regular pre-grant examination, providing greater
flexibility than the current re-examination procedure.
Some of the additional grounds for invalidating a patent under
the proposed post grant review include inadequate written
description or enablement, inutility and prior use of the invention
by a third party.
3. Third party submissions during examination
The new Act also increases the influence that third parties can
have on the examination of US patent applications. Under the
proposed changes, third parties will be able to submit printed
publications directly to the patent office for consideration by the
examiner. Any party submitting a publication to the patent office
will also have the opportunity to make written submission on the
patentability of the application.
4. Patent office fee setting authority
While many of the proposed changes aim to simplify the US patent
system and reduce uncertainty, any reduction in attorney costs is
likely to be matched by an increase in official fees levied by the
patent office under new provisions that grant the patent office
greater fee setting authority.
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