Recently, Congress and the Senate passed the America Invents Act, the first major revision of the patent laws since 1952. The amendments can be confusing, and there is of course uncertainty, even after the amendments are put into practice, as with any new law. After a brief run-down of the changes that are taking place, see how the amendments will affect your business and patenting strategy.
Moving to a "First-to-File" system: The US has, for a long time, been a "First-to-Invent" which means that the first person to invent is the rightful owner. Where two inventors claimed to be the rightful inventor, this would lead to expensive and convoluted interference proceedings, like a mini-trial requiring evidence and a hearing to determine who the rightful inventor was. The rest of the world has been operating on a First-to-File system, which reduces uncertainty but results in a race to the patent office, as the first person to file is the rightful owner. This change brings the US in line with the other patent systems around the world.
Post-Grant Review Proceedings: In the past, US Patents have been difficult to challenge on grant, short of litigation. When the law takes effect in approximately 1 year opponents of a patent will have new means to challenge the issue through post-grant review proceedings. Petitions for post-grant review must be filed within 9 months of the grant of a patent application, and can claim almost any ground of invalidity including prior disclosure or sale, indefiniteness of claims, and insufficiency of the specification. Review will be granted where the petition discloses unrebutted grounds where it is more likely than not that one or more claims is unpatentable.
Expanded Time Limits for Third-Party Submissions during Prosecution: Previously, submissions by third parties regarding the patentability of an application would have to be made within the earlier of two months of the publication of an application or prior to mailing a notice of allowance. Now the submissions may be made before the earlier of the date the Notice of Allowance is sent, or six months after publication.
Supplemental Examination: The patent owner can request reexamination of his or her application after issue of the application, to consider relevant information and correct the patent if appropriate.
Suffice to say, the amendments bring the US patent regime more in line with the rest of the world, which simplifies an international patent filing strategy. The America Invents Act makes challenging unissued and issued patents easier, through expanding the time for filing prior art during prosecution, and challenging the patent after issue with Post-Grant Review. Supplemental Examination will allow patent owners to voluntarily narrow the scope of their patent after having encountered documents that can impeach the patent. Overall, there are no changes that affect the patentability of business methods.
If you have any questions or comments, please let me know. You can reach me at engfield.ca.
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