Changes to USA patent law enacted on September 16, 2011

On Friday, September 16, 2011 the United States President signed into law changes to the U.S. Patent Laws.

Below is a brief preliminary summary of some the important changes you should know about.

One of the most important changes is that "First to Invent" will be changed to "First to File" effective 18 months after Sept. 16, 2011. Because of this change, what has been known as the “one year Grace Period” for an offer for sale or sale may be substantially altered.

One interpretation of the wording of the law is that effective 18 months from September 16, 2011, any application filed will no longer have the benefit of a one year grace period for any offer for sale or sale and therefore, prior to filing your application, there can be no offer for sale or sale “or otherwise make your invention available to the public" anywhere in the world.

Of interest, there is a second interpretation of this law where the sale and offer for sale can be included in the exclusion under “disclosure by the inventor”. The law states clearly that the one year grace period will be retained for direct or indirect disclosures made by the inventor. Unfortunately the term "disclosure” and both phrases “Disclosure by the inventor” and “or otherwise available to the public" are not clearly defined. Therefore this critical area may remain uncertain until there is a final court decision on the issue.

Other Important Areas of the New Laws Include the Following:

The United States Patent and Trademark Office Fee will be increasing by 15% (effective September 26, 2011)

Filing on Behalf of an Employee by Company

Effective one year from the enactment of the Act, a company can file an application on behalf of an employee where the inventor is under an obligation to assign the invention to the company and the inventor has refused to sign the oath or declaration that is filed with a patent application. This change should streamline the process of submitting applications where a company has to deal with an uncooperative inventor.

New options for challenging patents

Patent Office examiners have a short period of time to do all that needs to be done to examine an application and mistakes are made and bad patent claims can be granted. The new legislation gives patent challengers several new options for attacking pending applications and issued patents. For the first time, challengers will be able to petition the PTO for review of a patent on any grounds within nine months of the patent grant date, similar to the way in which newly issued patents can be opposed in Europe. A downside is that, if a challenger fails to invalidate a patent by this procedure, she cannot later challenge the patent on the same grounds in court. Additionally, the new law establishes a proceeding to resolve allegations that the inventor improperly derived the invention from another, and it maintains (and in some cases alters) pre-existing options for challenging or correcting patents and pending applications.

Third Party Pre-issuance Submissions

Effective one year from Sept. 16, 2011, this new provision allows anyone to challenge another’s patent filings, by bringing forward prior publications during prosecution of the application. A third party may submit any publication of potential relevance to a patent application before the earlier of a notice of allowance or the later of (1) six months after the date of first publication or (2) the date of the first office action rejection.

Post Grant Review Process

Within nine months after grant or reissue, a Petitioner may request to cancel one or more claims of a patent. After the nine month window closes, third parties will be able to challenge a patent through a review to be conducted by Patent Trial and Appeal Board.

Defense to Infringement Based on Prior Commercial Use

The Act expands the defense to infringement based on prior commercial use to affiliates and to all areas of technology. To use the defense, a party must show a reduction to practice and commercial use at least one year before the effective filing date of the subject patent.

Patent # Marking on Products

The Act provides for so-called "virtual marking." Specifically, patentees may satisfy marking requirements by marking articles with "patent" or "pat." and an Internet address, accessible to the public for at no charge that reports the status of the patent. Regarding false marking, under the Act, only the United States can sue for penalties under the false marking statute. A person who has suffered competitive injury has standing to bring a civil action for compensatory damages.