Published by Adrian Hocking on 29th November 2011
This is Part 1 of a multi-part series exploring the changes to US Patent law in light of the ‘America Invents Act’, along with an overview comparison between US Patent law and European Patent law.
During September 2011, US President Obama signed the so-called ‘America Invents Act’, bringing about major changes to US patent law. In some respects, the new Act harmonises US patent law with the patent laws of the other major countries around the world, and in other cases it simply aims to address perceived deficiencies.
One of the major changes in US patent law is that the system will move to ‘first to file’, instead of ‘first to invent’. Europe, the United Kingdom, Australia, China, Japan, Korea and many other patent law systems are ‘first to file’, and this change brings the US in line with nearly all major industrialised nations of the world.
This may be seen as being somewhat detrimental to the individual inventor or small business with limited funds. An individual inventor filing a Provisional patent application in the USA will presently be charged US$125 by the USPTO, whereas filing an initial ‘provisional’ patent application in Europe or the UK to simply stake a claim will not incur any official fees. It is also worth noting that an international patent application (‘PCT’) can also be filed without payment of the official fees. If the fees are not paid to the UK Patent Office, European Patent Office or Receiving Office in the case of a PCT, then the respective applications will lapse. However, and importantly, the priority option remains, allowing a follow up application to be filed within the first 12 months claiming the date of the earlier application for the original matter.
Consequently, by becoming a ‘first to file’ country but by not allowing ‘free’ filings to take place in order to establish priority, it can be argued that the USPTO is creating some hardships for those in a less well-off position.
Another major change to US Patent law is the abolishing of the well-established 12 month grace period to file following first disclosure in the form of printed publication, public use, sale or availability. The grace period is still available in the US in a limited form, relating now only to a specific disclosure directly or indirectly by the inventor.
In Europe, and similarly in the UK, it has long been established that absolute novelty is required. As such, any prior disclosure in any form of the claimed invention can impact the validity of the subsequently filed patent application.
Europe and the UK do have some exceptions to this rule, and a six month grace period for filing a first patent application is provided in the event of an evident abuse of confidential information or the invention was displayed at an officially recognised exhibition.
However, as a general rule of thumb, it is better to keep your invention secret until such time as your patent application is filed.
Part 2 of this series will explore Post-Grant Proceedings and Prior Use.