Further Alignment Of US Patent Law With Elsewhere

Author:Mr Mark Lunt
Profession:Harrison Goddard Foote - Patent and Trade Mark Attorneys

The USA has come another step closer to aligning itself with the rest of the world with regard to patent law. On 8 September 2011, Congress passed a patent reform bill (that was approved by the Senate in June) and which President Obama is now expected to sign, bringing it into law. When that happens, there will be a number of effects. Here, we look particularly at how the bill will affect UK inventors:

Fees: Patent fees will increase by 15 per cent, ten days after enactment. Clients would be advised to check what US patent activity they have and pay fees due in the next few months now. First to File: 18 months after enactment, the US will move to the First-to-File system in which the patent application that is filed first has priority. In Europe we are familiar with this, but in the States they have always had the First-to-Invent system, whereby the first inventor to conceive the invention would be awarded the patent. That resulted in the complex and expensive "Interference" proceedings at which inventors of the same subject matter would argue as to who was the first to conceive it. As a result of the First-to-File system, interference proceedings will disappear. In principle, this does not affect the way UK business should manage their patent position. Grace Period: There has always been a twelve-month grace period in the States, to protect inventors from prejudicing their own patent applications following public disclosure of their inventions. In most countries, a grace period does not exist; there is a strict absolute novelty requirement. While we may be familiar with such a system, the US is not ready to adopt it and the one year grace period remains. The US grace period also remains effective for those UK inventors who have destroyed their ability to get European protection through early public disclosure (although there is a six month grace period for German utility model patents). UK inventors can continue to get US protection for up to one year after their first public use. Prior Art: The benefit of the 12 month Grace Period is slightly diminished by a change in what is defined as prior art in the US. Now, prior use of an invention outside the States will constitute prior art against subsequently filed US applications. This will have a major impact for any UK business that publicly uses an invention before a third party patents the same thing in the States. That prior use will now count as prior art. Also of benefit to UK...

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