Information For Inventors: Changes to US Patent System

September 26th, 2011

America Invents Act: Improving the US Patent System

On Friday 16th September, President Obama signed the Leahy-Smith America Invents Act (The AIA or Patent Reform Act of 2011) which brings new legislation to the American patenting system in order to improve current processes. The changes have been proposed for some time and, having been finalised just days ago, it is believed that the modifications to the system are the most significant since 1952. (Goldman, David (June 24, 2011). “Patent reform is finally on its way”. Retrieved August 16, 2011.)

Although none of these changes will affect UK filing, they are relevant for those looking to extend their UK applications into the US or the PCT (Patent Corporation Treaty): an international unitary filing system that allows an applicant to file in all 142 countries who subscribe, including the US.

Most of the changes seek to implement improvements in regards to challenges, disputes, opposition and re-examinations, however one of the most significant changes worth noting include:

  • Changing the patent system from first-to-invent to first-to-file. Before, inventors who had dated proof of an inventions’ creation could challenge and effect a patent application by another inventor even without having officially filed one themselves. This would include the ‘poor man’s patent’ where people often send something to themselves by recorded delivery: a method that holds very little weight against existing patents and applications. This enforces the necessity to file a patent to officially register an invention and brings the first-to-file method in line with the majority of patent systems globally.

Other changes include:

  • Not having to apply as the inventor. Previously, America was the only country in which the inventor had to be the applicant. This made it difficult when filing a PCT as the application had to allow for this. Now, an inventor can assign another party to apply on their behalf: this means that a patent attorney can be appointed as the applicant, as is the case in most other countries.
  • Providing reduction in fees for priority filing if an SME (Small and Medium Enterprise). This allows smaller entities an equal chance at obtaining a patent as more established corporations with larger budgets, providing better economical equality.

With America finally coming more in line with the patenting systems held in most other countries, this hopes to make international filing a simpler process and paves the way for future improvements in patenting systems across the globe.