22 July 2011: US Patent Reform – Update
Matthew Train, Patent Attorney for Reddie & Grose LLP
This update supplements our news article from 30 May 2011 entitled “US Expected to Make Largest Patent Reform in 60 Years”.
Following the US Senate’s approval of the American Invents Act earlier in the year, the US House of Representatives has approved, by a significant majority, similar legislation. Thus, both law-making arms of the US Government have now given their approval to patent law reform.
The version of the Act approved by the House of Representatives differs in respect of a few details from that approved by the Senate, and the Act must now return to the Senate for further consideration before the patent law reforms can be enacted. Unfortunately, such discussions have been put on hold because of the negotiations related to raising of the US debt ceiling, and commentators are expressing doubts that patent reform will make it onto the agenda before the Senate returns from August Recess in September.
In terms of the impact on patent applicants, the differences between the two versions of the legislation approved are minor, and both the House and the Senate have approved the change from a first-to-invent to a first-to-file system (as outlined in our earlier note). Having said this, certain Senators have indicated they are willing to dig in their heels to prevent the changes made by the House. If this happens there could be stand-off between the two bodies until one side is willing to concede to the other's wishes. As such, the Act is now subject to political wrangling and it could yet be some time before we the patent reforms enter into force.