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New US Patent Law: Will It Ring In Real Reform?

09 November, 2011

The new rules at the USPTO introduce a number of significant changes to the manner in which patents will be handled. On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act, which is arguably a significant shift in Patent Laws in the USA. The introduction of this act (and the change in rules described above) was the initiative of Senator Patrick Leahy, a Democrat from Vermont, alongside seven co-sponsors.

The first change (and a big one) is that the USPTO has become a first to file system, as opposed to a first to invent system (which is what most patent offices around the world adhere to). This change has been labelled the first inventor to file system of prosecuting patents. The second change is that there is an extended period after the grant of the patent for public objection (as opposed to only pre-grant opposition, which gave the public a chance to oppose frivolous, obvious or other inventions which, if patented, could be considered harmful to society). The third change is a removal of interference proceedings, which may be defined as the appeal process/processes that are in place to arbitrate between two inventors who have filed close together. It bears noting that in a first to invent system, such arbitration would be in place mandatorily as an inventor, who has filed a patent, may face contention from a second inventor who claims to have been the first to invent the contents of the first inventor's disclosure.

The Prior-Art section of any Invention Disclosure is the section that talks about the trajectory along which the invention lies. All bibliographic information from material relating to the invention or that which sets the background for the invention including academic sources, product references and even other patents are disclosed in detail in this section. This enables the patent examiner to understand the related work around the patent and determine the requisite novelty, inventive-step and industrial applicability of the invention being disclosed. Novelty is self-explanatory in that any invention cannot rely on what is already known or imitate it. The Inventive-Step refers to the facet of the invention that differentiates it from the prior-art already in place. Industrial Applicability is a requirement that is essential in Patent Applications in order to filter out applications that are not basically patentable subject matter such as pure mathematical equations. The requirement that a patent be applicable to a particular industrial segment within the realm of a larger system or process is important in order to keep out patents, which would retard the progress of science.  In the new rules introduced at the USPTO, the definition of prior-art has been defined specifically to include "public use, sales, publications, and other disclosures available to the public as of the filing date, other than publications by the inventor within one year of filing, whether or not a third party also files a patent application."

In addition, the new rules make provisions for further changes including the lack of differentiation in inventions centred around Tax Strategy, conditions on the false marking of patents (i.e., inventors using 'patent pending' without having patents in place) by means of specific restrictions and others including the micro-entity status to provide incentives for smaller entities to file for patents by subsidising the patent fees. The new procedures for re-examination within the bill have come under severe criticism in the light of harming smaller companies that are trying to use patents to their advantage as successive re-examinations could kill or delay patent-related advantages such as licensing.

However, in a more optimistic sense, the same rules apply to larger companies as well. While the opponents of the bill are of the view that start-ups will be at a disadvantage as rapid prototyping without patents in place will no longer be an option, the biggest advantage of the new bill is that it creates incentives for smaller entities to use the patent system to their full advantage. Additionally, the basic rules of having a year to convert a provisional patent to a complete patent have not been changed and therefore, there are still ways for the inventor to file for a patent and take 12 months to realise their path to market.

In conclusion, the new Patent rules in the USPTO are more in line with what the rest of the world has implemented and brings about uniformity while aiming to reduce pendency at the patent office. Typically, the USPTO has a pendency of 5-7 years for the grant of a patent. So it remains to be seen if this decreases in the coming years with the new rules.


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New US Patent Law: Will It Ring In Real Reform?

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