We continue in our series of snap-shots of changes to US patent
law as a result of The America Invents Act, signed into
law by President Obama on 16 September 2011. This act will bring
about significant changes affecting the entitlement of an inventor
to a patent and the scope of the available prior art.
Summary of changes
The proposed changes include:
a first-inventor-to-file system replaces the old
the prior art base for novelty and inventive step has been
the grace period has been restricted from prior disclosures
made by anyone to disclosures which derive from the
Australian applicants can avail themselves of the US grace
period by filing an Australian application
These changes are yet to come into effect (see below).
The prior art base has been broadened to include the use or sale
of the invention in countries outside of the US. Previously, only a
use or sale in the US was novelty destroying.
This means that the sale or use of the invention in Australia
before the first filing of a patent application would destroy the
novelty of the claims of a US patent. This was not the case
For applicants, this imposes a higher validity threshold. For
competitors of patent holders, this provides an additional ground
of attack against a granted patent.
Grace period Previously, the grace period applied to
disclosures (by anyone) made within the year preceding the filing
of the US application. The new grace period applies to disclosures
made 1 year or less before the "effective filing date" of
an application, provided the disclosure was made by:
a co-inventor or
another who obtained the information directly or indirectly
from the inventor or co-inventor
These changes provide significant advantages to Australian
businesses that are filing in the US. Previously, the grace period
only extended for the 12 month period prior to the US
The new grace period is based on the effective filing date. For
an Australian applicant, the effective filing date is essentially
the filing date of your first application in Australia. Therefore,
the grace period extends for a period of one year prior to the
filing of, for example, your Australian provisional
Another interesting feature of the grace period is that any
information that is disclosed by anyone after the inventor has made
an initial prior disclosure can be removed from the prior art base.
This means that you do not have to worry about third party prior
art anticipating your claims, provided you have made an earlier
disclosure. That is, if you can show that the inventor has
disclosed the information previously, before a relevant piece of
prior art, then that prior art can no longer be considered for the
purpose of novelty.
When is this happening?
The new provisions come into effect for US applications with an
effective filing date on or after 16 March 2013. Generally, the
effective filing date equates with the priority date. This means
that the old law will still apply to US and international
applications which rely on an Australian priority application filed
before 16 March 2013. So the changes may not be felt by Australian
businesses filing in the US until after March 2014.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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