On September 16, 2011 President Obama signed into law the America Invents Act (the AIA), which brings sweeping changes to the U.S. patent system. The AIA will substantially affect how U.S. patents are applied for, awarded, reviewed and asserted. Major changes of the AIA include the adoption of the first-to-file system as well as the introduction of a new USPTO proceeding for post-grant review of issued patents. The AIA also includes changes to eligibility for filing false marking lawsuits, the introduction of a new micro entity for fees, the elimination of the best mode requirement as grounds for invalidity, expansion of prior user rights as an infringement defence and a 15 per cent fee increase beginning September 26, 2011.
The AIA will change the patent strategy of those filing for patents in the U.S. While the AIA brings the U.S. patent system closer in line with the Canadian patent system by adopting a first-to-file rule, an applicant wishing to file applications in both Canada and the U.S. should be aware of differences between Canadian patent law and the new U.S. patent law resulting from the AIA.
One-Year Grace Period
The adoption of a first-to-file system brings the U.S. in line with the rest of the world. Similar to the Canadian patent regime, the new U.S. law provides a one-year grace period on public disclosures made, either directly or indirectly, by the inventor. According to the new U.S. law, prior art disclosed by the inventor within one year of an application's effective date will not be citable against the application. The effective date is either the filing date of the application, or the priority date if priority is claimed to another application. This is in contrast to the one-year grace period available in Canada, which requires the Canadian application to have a filing date within one year of disclosure by the inventor.
For example, the same public disclosure by an inventor would not be citable as prior art on a subsequently filed U.S. application that claimed priority to a Canadian application, even though the U.S. application could be filed up to two years after the initial public disclosure by the inventor.
Another factor to consider when filing applications in both Canada and the U.S. is the Canadian requirement to demonstrate utility or support a sound prediction of utility. In Canada, unlike the U.S., utility or sound prediction cannot be supported by the submission of post-filing data. As such, a Canadian filing must include sufficient data to support utility or a sound prediction of utility at the time of filing, within one year of an initial priority filing or within one year of an initial public disclosure made by the inventor.
The requirement for a Canadian application to support, or soundly predict, utility must be balanced with the desirability of filing as early as possible in the U.S., which resulted from the adoption of the first-to-file system in the U.S. As such, an applicant wishing to file an application in both Canada and the U.S. must ensure that all data required to support utility, or its sound prediction, will be available within one year of an initial filing or inventor disclosure.
Review of Issued Patents
The AIA also introduces a new post-grant review process which allows any party to challenge the validity of an issued patent on any grounds. While there is no corresponding process in Canada to challenge the validity of an issued patent on any ground, it is possible for any party to request that an issued patent be re-examined at any time. In order to have a patent re-examined, a party must submit prior art consisting of patents, applications for patents open to public inspection and printed publications. In addition to the prior art, a request for re-examination in Canada must also set forth the pertinence of the prior art and the manner of applying the prior art to the claim for which re-examination is requested.
Although it is possible to request re-examination in Canada, consideration must be given to whether it is likely that the claims of the patent can be amended to overcome the newly cited prior art. During the re-examination proceeding, a patentee is able to amend the claims and/or submit arguments to overcome the prior art. As such, it is possible for the patentee to overcome newly cited prior art and so strengthen the resulting re-examined patent. Accordingly, a party wishing to invalidate an issued patent based on prior art should carefully consider whether re-examination of the patent is the best route, or if the validity of the patent would be better attacked in a court proceeding.
The AIA brings substantial changes to the U.S. patent system. These changes will of course affect decisions for applicants filing for patents in the U.S. Although not directly affected by these changes, Canadian patent law must be taken into account when considering filing strategies for applications in both Canada and the U.S. in view of the new U.S. patent reform.
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