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 patents.
- Provisions for third parties submissions during examination.
- 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 agreements.
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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