Ever since the first US Patent Act was signed by George Washington in 1790, the first-to-invent philosophy has been a cornerstone of US patent law. This, along with many other aspects of US patent law, is all set to change if the America Invents Act is passed by the US government.
Arguably the most important change is a shift from the present first-to-invent system to the first-to-file approach taken by the rest of the world. Under the first-to-invent system, the effect of a piece of prior art is determined with respect to the date of the invention, not the date of filing an application for the invention. This means that a prior art document published before an application’s filing date can be ignored for patentability considerations, as long as the inventor can prove he made the invention before the publication date of the prior art document, and provided the prior art document was not published more than one year before the filing date of the application. In other words, the most important fact when determining entitlement to a patent is that the inventor was the first to invent the subject matter of the application.
Under the proposed first-to-file system, however, the filing date of the inventor’s application is used to assess the effect of prior art (not the date of invention), and if two inventors independently invent the same subject matter, it will be the inventor who files the first application that will be entitled to the invention. This is the system that is used in Europe and the majority of the rest of the world. One difference to the European system is that the proposed US law introduces a grace period of one year prior to the filing date of the application, but unlike the present US grace period, the new grace period will only apply to prior art disclosures which originate from the inventor.
Another significant change is that public use or sale anywhere in the world will now constitute prior art against a US application (compared to the present law where public use or sale is only prior art if it happens in the US). Also, the proposed law change introduces a post-grant review procedure which appears to be similar to the opposition procedure of the European Patent Office.
The America Invents Act has been approved by the US Senate, and is currently awaiting a vote before the US House of Representatives. Whilst this has been placed on the calendar of business, it remains unclear exactly when the vote will happen. However, US commentators have expressed confidence that the Act will be passed, with some predicting it will be enacted this year. It appears that the new law will only apply to applications filed after the date on which the law enters into force.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.