US patent laws step into line

Posted on 16 Sep 2011 by The Manufacturer

The America Invents Act is to be incorporated into US law from today (Sept 16), meaning US patent laws will resemble those of much of the rest of the industrialised world.

According to patent and trade mark lawyers Wither & Rogers, the changes will be welcomed by companies seeking patent protection for their inventions in the US and could mean applications are dealt with more quickly.

Main changes to legislation include adoption the ‘first-inventor-to-file’ rule, which applies in Europe. Until now, any dispute about the ownership of a patent for an invention was decided in favour of the person able to prove that he or she came up with the invention first. This approach led to costly litigation to establish the dates of the invention. Instead, US law will be like in Europe, with the right of ownership being allocated on a first, come first served basis – coming into effect in 18 months.

“The United States Patent and Trade Mark Office (USPTO) is also taking the opportunity of this overhaul of patent law to make some changes to its fee structure and the way the organisation can use the funds it generates,” said Dave Croston, a patent attorney at Wither & Rogers.

He added: “These changes should help the organisation to tackle the massive backlog of pending US patent applications, which currently stands at over 600,000.”

The incoming legislation is adopting stricter rules relating to ‘prior disclosure’. The USPTO is adopting the ‘absolute novelty’ rule, which means that prior disclosure anywhere in the world, not just in the US, may now be used to challenge a US patent. This rule already applies in most other cases.

In addition, third parties will also be able to object to a US patent for up to nine months after it has been granted, which is similar to European Patent Office (EPO) opposition proceedings.

George Archer