Significant Changes to US Patent Law

US patent law has recently received a major overhaul with the signing of the “America Invents” Act by President Obama on 16 September 2011. These changes will be phased in in the next eighteen months and include the following:

• A move from “First to Invent” to “ First Inventor to File” moving the US to a middle ground between the “First to File” system used in most territories around the world, including the UK and Europe, and the previous position of the US.
• Major changes to what disclosures are taken into account when assessing novelty, moving away from the previous position where certain disclosures outside the US were not considered (such as offer for sale or use, for example) to a more equitable position for foreign applicants where use or sale, for example, anywhere can currently deprive patent claims of novelty.
• A “Post-Grant Review” system is to be introduced implementing an effective opposition procedure for the first nine months from grant a US patent, similar to the opposition procedure for European patent applications.
• The introduction of “Micro-entity status”, for higher education institutions, individuals and small businesses who fulfil the new criteria, for whom the official fees will be halved again from those of small entities for a 75% overall reduction.
• The lack of a best method of implementing an invention is now only grounds for rejection at the examination stage, rather than throughout the patent’s life.
• It is now possible to accelerate an application using “Prioritised Examination” and the payment of a fee (proposed to be approximately $4800).