Assuming the Mayans are wrong and we actually get into 2013, it would do the prospective inventor or business well to become familiar with the forthcoming changes in patent law. In September 2011, President Obama signed into law the America Invents Act . The law goes officially goes into effect on March 13, 2013, for new patent applications filed, but individual provisions may go into effect anywhere between 12-18 months in the future. At a high level, here are some of the most notable changes. (This is not an exhaustive list.)
i. First to File. The race is on! The U.S. becomes a ‘first to file” country moving away from the “first to invent” system currently in place. Starting on March 13, 2013, the applicant who submits a patent application first has priority over any other applicant, even one who invented before the first applicant claiming the same invention. This change to “first to invent” brings the U.S. in line with the rest of the world when it comes to patent application and issuance. Additionally, patent applicants will no longer be able to rely upon an earlier date of conception when prior art has an earlier date than the effective filing date of the patent application (if that prior art is not of their own disclosure).
The policy change is clear—do not rest on your patent rights. Under the new system, an inventor who waits to file an application may risk losing his or her patent rights to an inventor who invented later, but filed first.
ii. Extending a little less grace. Under the new law, an applicant will only be able to “swear behind” (affirm via affidavit) a disclosure when the disclosure is made one calendar year or less before the effective filing date of a claimed invention. Furthermore, this benefit is only afforded to an inventor when the disclosure is made by him or by another party who obtained the subject matter disclosed from the inventor. Under previous patent law, one could swear behind a disclosure regardless of who authored the disclosure. However, even under the new law, a disclosure of the claimed invention in a patent or patent application made less than a year before the applicant’s application is still not considered prior art if the disclosure in a patent application is owned by the same entity or subject to an obligation of assignment to the same person.
iii. What is art anyway? (Prior Art, that is). No, this is not a freshman level art appreciation course, but rather what the law defines as material that existed before an application filing date and thus may bar a patent’s issuance. Under the new law, a person shall be entitled to a patent unless the claimed invention was “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public more than a year before the effective filing date of the claimed invention.” This recent change (in italics) provides a much broader range of material that can be used by the USPTO to bar a patent from being issued.
iv. The Express Lane is now open (30 claims or less shopping please). For a cost of $4,800 (or $2,400 for small entities—those organizations with less than 500 employees), patent applicants can request prioritized examination of their application. In order to qualify for such fast-tracked examination, the patent application can have no more a total of thirty claims, with no more than four being independent claims.
v. Changes to the prior user defense to patent infringement. Previously, the Patent Act included a defense to infringement of “business method” patents to cover situations where the accused infringer used the invention more than one year prior to the filing date of the patent. Now, the prior use must be more than one year before the effective filing date of the patent. The prior user defense cannot be asserted if the invention was derived from the inventor alleging infringement.
vi. Interference Practice. Under the new law, interference practice will no longer be a viable option because priority for an invention will be based solely upon the effective filing date of the application rather than the date of conception. Removing date of conception from the discussion renders debates over who came up with the idea first moot. It is now all about the filing date. Now, it is not a complete loss to the “late” inventor who thinks his invention was stolen before he could file. In certain cases, an applicant or patentee may have relief by civil action against another patent owner if the claimed invention was derived from the inventor seeking relief.
vii. Eliminating the “best mode” defense to infringement. An alleged infringer can no longer assert, as a defense to infringement, that the applicant failed to disclose the best mode. This change is limited to infringement defenses. In his application, an inventor must still discose the best mode of practice for the invention claimed.viii. Miscellaneous other changes
Banning patents directed to human organisms. The new law states that “no patent may issue on a claim directed to or encompassing a human organism.” This change only applies to new applications filed after the effective date.
False marking lawsuits. Previous patent law allowed anyone to sue the manufacturer or seller of a product that was marked with an incorrect or expired patent number. Under the new law, the private right of action is limited only to those directly harmed as a result of false marking.
Limiting the ability to sue multiple infringers in a single lawsuit. Under the new law, multiple defendants may be joined in a single patent lawsuit only if all defendants are accused of making, using or selling the same product or process. The plaintiff must have more than a mere allegation that each defendant individually infringes its patent in order to join the defendants in a single suit.
The times are indeed a changing. Again, this is but a high level summary of the most notable changes in patent law that have us all talking. I, for one, think the changes are good and will have favorable results in efficiency of prosecution but also fulfilling both the letter and spirit of the law. But, as the oracle warned, beware! As with any new law, the benefits or burdens will not be felt for years to come.
Scot Ganow can be reached at [email protected]