October 2011
Important changes in US patent law
The America Invents Act (AIA) came into force on 16 September 2011. Some of its changes are already in force while others, which have important implications for US patentees, and applicants, will not take effect for some time.
- US Patent and Trademark Office (USPTO) Fees have increased by 15%.
- For many years certain “small entities”, namely individuals, small companies, non-profit organisations and universities, have been entitled to 50% fee reductions. The AIA introduces a new “micro entity” category of applicant. This includes individuals of low gross income who file few US patent applications, and some US higher education institutions. A micro entity is entitled to a 75% fee discount.
- An applicant can ask for a patent application to be dealt with within 12 months of filing by paying a prioritised examination fee ($4,800).
- Historically, the first person to make an invention has been entitled to a US patent.The US-based inventor that first made an invention is entitled to the patent, even if another person filed an earlier patent application for the same invention.
Under the AIA, this will change on 16 March 2013. Under the new system the first person to file a US patent application for an invention will be entitled to the US patent. This system mirrors those in most of the rest of the world.
- While most disclosures, published before an applicant files for a US application, can prejudice that application, US law makes an exception for the inventor’s disclosures, if the disclosure is made less than 12 months before that filing. This practice will not change under the AIA, despite the move to a first-to-file system.
If you have made an invention, our advice is that you should file a patent application as soon as possible. After March 2013, if someone else discloses the invention before you file an application, that will prevent you from obtaining a patent in the US, just as it already would in other countries.
- On 16 September 2012 the USPTO will introduce procedures for attacking competitors’ patents, and reviewing your own patent or application.
- Until now, a US patent owner has been best positioned to claim patent infringement damages by marking its’ own product with the patent details. Now the patent owner can “virtually” mark the product, by referring to a website giving full patent details.
- Previously if a US patent owner marked its product “patented”, when there was no patent protection (e.g. if the patent term had expired), another party could sue for “false marking”, which could lead to high damages awards. The AIA has restricted the relevant circumstances to those in which a commercial competitor suffers an identifiable loss from the incorrect marking.
- The UPTO will not now grant a patent for a human. Similarly it will not patent strategies for avoiding or reducing tax.
- The AIA relaxes formal requirement that an application be in the name of, and the relevant signed by, the inventor(s). this will make it easier to file an application if an inventor is not available
The AIA is long and complex, and at this early stage we have listed only its main points. Please contact us if you would like advice or further information on those points or the AIA in general.