Friday, September 30, 2011

An act to streamline, harmonize US patent law

On September 16, 2011, the US President Barack Obama signed the Leahy-Smith America Invents Act – enacting it into law that is widely perceived as a reform to foster innovation and stimulate US economic growth by streamlining, harmonizing the US patent process. The new law will speed up the patent process that will help applicants and entrepreneurs bringing their inventions to market sooner, creating jobs and new business avenues. This reform is proposed to give a boost to American companies and inventors who suffered costly delays and unnecessary litigation, and to focus instead on innovation and job creation.

The new law have several effective dates for various provisions, some changes coming in effect immediately whereas other changes will not be implemented until 2012 and 2013. Some of the key highlights of American Invents Act include:
Section 3
First Inventor to File
Amends 35 USC § 100 to reform the US patent system by adopting a first-to-file system instead of a first-to-invent system, bringing the US in conformity with the rest of the world in determining priority of invention based on the earliest date a patent application was filed with a patent office. There is a limited one-year grace period related to public disclosures made by the inventor. 

Derivative proceedings
Amends 35 USC § 135 to replace interference proceedings with “derivative proceedings” to determine whether an inventor of first-filed patent application derived the claimed subject matter without authorization from an invention named in a later filed application. This reform will eliminate long-standing interference proceedings. A petition for derivative proceeding will only be allowed if it is filed within a limited one-year period beginning on the date of the first publication of a claim in the earlier filed application. 

Conditions for patentability; novelty
Amends 35 USC § 102 to redefine the scope of prior art as anything patented, published, on sale, or in public use before filing, or any patent application filed by another before the effective filing date of the claimed invention. This reform will now broaden the scope of on-sale or public use outside the US, bringing the US in conformity with practice of other jurisdictions such as EU and India. This reform will now allow US examiners to take into account traditional/indigenous knowledge whether in written or oral form as prior art in determining novelty of the invention. 

Conditions for patentability; non-obvious subject matter
Amends 35 USC § 103 to consider obviousness as of the effective filing date of the claimed subject-matter rather than at the time invention was made. 

Amendments made to section 3 will come in effect 18 months after the date of enactment, i.e. March 16, 2013. 
Section 4
Inventor’s oath or declaration
Amends 35 USC § 115 to permit applicants to make a “substitute statement” instead of an inventor’s oath when an inventor is deceased, under legal incapacity, or cannot be found or reached after diligent effort. 

Filing by other than inventor
Amends 35 USC § 118 to allow applicants to file the application for patent when inventors has assigned or are under the obligation to assign the invention, bringing the US in conformity with the rest of the world in permitting applicants to directly file patent application on behalf of inventors. 

Amendments made to section 4 will come in effect 1 year after the date of enactment, i.e. September 16, 2012. 
Section 5
Defense to infringement based on prior commercial use
Amends 35 USC § 273 to expand “the prior user” defense to infringement to all patents rather than restricting only to business method patents. The prior user have the burden of showing a prior use of the claimed invention more than a year before the priority date of the claimed invention. Even if a prior use is kept confidential it will be a valid defense to infringement. The prior use defense is not available in case where the invention was owned by or under obligation of assignment to a university or technology transfer organization at the time invention was made.

Amendments made to section 5 are in effect immediately. 


  1. President Obama certainly made a difference in the passage of this bill, in the process also significantly raising the profile of the patent world and its issues. It's too bad that the U.S. Congress didn't do its part by enacting the patent reform bill that almost everyone else wanted -- one that would have ended the diversion of USPTO fees to the legislature. But then, I guess that's what happens when you let foxes guard the henhouse.

  2. Its good to see that US patent law has been harmonised in line with others ; particularly sec3 wherein First to file gets precedance over first to invent(hitherto followed).
    This removes a major confusion when it comes to deciding priority.