“America Invents,” But Does It File?

By Michael Zoller, Esq.
mzoller@pashmanstein.com

The process to patent an invention in the United States can best be described as archaic.  Recent legislation that is now beginning to take effect looks to change the process (and hopefully improve it, but that remains to be seen).  On September 16, 2011, President Obama signed into the law the “America Invents Act.”  All of the Acts provisions became effective as of March 16, 2013.  The Act presents some big changes to US Patent Law that every inventor, or business that employees inventors, needs to be aware of.

The biggest change is that the Act changes the United States from a “first-to-invent” country to a “first-inventor-to-file” country.  Under the old system, when a person filed for a patent was not as important as being able to show that he was the true inventor of the material for which the patent was sought.  Now, under the new system, baring a few exceptions described below, the most important thing for establishing the right to a patent will be who was the first to file the application not who actually invented the material.

A second change to the system is an expansion in the definition of “prior art.”  Under the old system, prior art that caused the denial of a patent only came from the United States.  Under the new law, prior art can come from anywhere in the world.  An exception to the prior art that excludes a patent is a “disclosure.”  A disclosure, though not fully defined in the Act, is when the inventor reveals his invention to the public within a year prior to filing for a patent.  While this sounds very beneficial to the patent applicant, an applicant needs to be aware that a lot of countries do not have the disclosure grace period that the US system offers, so if a patent applicant makes a disclosure it might not affect his ability to obtain a patent in the US, but it could ruin his chance of obtaining a patent in other countries.

As mentioned above, even though the system is now a first-inventor-to-file system, the first person to file will not always be the one to retain the patent.  Once a patent is granted, there are three procedures whereby a person can challenge the patent to have it revoked from the filer.  Under the new derivation proceeding, within a year of a patent being granted, a fellow patent holder can challenge the newly patented invention as being derivative of his previously granted patent by showing that the new patent is the same or substantially similar to his previously granted patent.  If the person who brings the derivation proceeding is successful, the new patent will be transferred to the successful claimant.

If a person who does not have a patent of their own wants to challenge a newly granted patent, they can do so either via an inter partes review or a post grant review.  An inter partes review has to be brought within nine months of a patent being granted and a non-patent holder can challenge the new patent on the specific grounds of either the patent not being novel or consisting of non-obvious material.  If the challenger is successful, the patent will be canceled.  A post grant review also has to be brought within nine months of a patent being granted and in it, a non-patent holder can challenge a new patent on any ground related to patentability.  Again if the challenger is successful, the patent will be canceled.  Even though the US system is now a “first-inventor-to-file” system, all of these review procedures will stop a patent from remaining with a filer, regardless of him being the first to file.

These changes to the US patent system are intended to make the system clearer, speed up the process and bring it closer to conformity with the systems in other countries.  Whether these goals will be achieved remains to be seen, but all inventors and companies that employee inventors need to be aware of the new laws and proceed accordingly.

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