U.S. Patent law reform update

On September 16, 2011, the Leahy-Smith America Invents Act was signed into law. The act introduces significant revisions to U.S. patent law, such as moving to a “first-inventor-to-file” system, introducing procedures for third party challenges, and providing new avenues for patentees to correct deficiencies in issued patents.

The “first-inventor-to-file” provision is a result of a revised novelty statute, 35 U.S.C. §102. Under “first-inventor-to-file” a patent applicant (or a true inventor) may be granted relief against an earlier application filed by another, where the earlier filed application was derived from the work of the ‘true inventor’. The revised novelty statute further widens the scope of what is constituted as prior art, particularly outside of the United States. Currently, only printed publications and patents are considered prior art outside of the United States. After March 16, 2013, acts occurring outside of the United States, such as public use, on sale activities and subject matter which is “otherwise available to the public” will also be available for prior art purposes.

Additionally, the revised novelty statute provides an amended definition of what constitutes an effective filing date for published patent applications and issued patents in the United States. As of March 16, 2013, foreign published applications or issued patents to which granted United States patents claim priority will be prior art that is effective as of their filing dates for the purposes of both novelty and obviousness. Currently this is known as a patent’s or application’s “102(e) date”. However, as of the enactment of the revised novelty statute this will likely be referred to as the patent’s or application’s “102(d)(2) date”. The amended definition of the effective filing date greatly reduces the pressure of having a U.S. Provisional serve as a priority founding application.

Another significant change relates to third party submissions of prior art. The Act provides third parties with the opportunity of submitting prior art, and providing comments regarding the prior art, for an extended period of time from that which is currently available. Furthermore, a supplemental examination will be available to patent owners to address issues that may relate to allegations of inequitable conduct. A positive ruling from a supplemental examination may bar later allegations of invalidity due to inequitable conduct. A further amendment relating to inequitable conduct is the failure to include the best mode no longer being available for a charge of inequitable conduct. However, including the best mode in patent applications is still required under 35 U.S.C. §112.

Valea AB will continue to monitor the developing news on the patent reform. Please contact Valea AB for further information on the U.S. patent reform and how these changes may affect your business.

// Sarah Rodriguez