New Zealand: Changes in the US patent system that you need to know about

Last Updated: 29 September 2011
Article by Justin Sweetman

There are a number of key changes to the US patent system which will be made effective once the Leahy-Smith America Invents Act (AIA) Senate passed bill is signed off by President Obama. The significant changes are summarised below.

First to file system

The present 'first to invent' system for determining who has the right to file a patent for a particular invention will be replaced by a 'first to file' system which will bring US Patent Law into closer alignment with the laws of most other countries in the world.

Under the new system, the first party to file a patent application will be entitled to pursue that patent application, and the first party's patent application will serve as prior art against any later filed patent application. Such a 'first to file' system will effectively prevent any subsequent filer from pursuing the same invention and will increase the importance of promptly filing patent applications once an invention is developed. In addition, a new "Derivation Proceeding" before the Patent Trial and Appeal will determine whether an inventor named in the earlier application derived the claimed invention from another inventor.

Any patent application which is filed within the next 18 months (or can claim priority to an earlier patent or application that was filed before the commencement date of the "first to file" system), will come under the old "first to invent" system.

Post-issuance review of patents

In an effort to provide broader basis for challenging patents outside of the courtroom the USPTO will introduce three new procedures for post-issuance review of patents 12 months after the AIA bill is made effective.

The current inter partes reexaminations will be replaced with a process termed "Inter Partes Review", to be adjudicated by a new Patent Trial and Appeal Board (formally the Board of Patent Appeals and Interferences). Inter Partes Review will permit third parties to challenge a patent at any time during the life of the patent. on the limited grounds of lack of novelty or obviousness only. The asserted prior art will be limited to only patents or printed publications.

The USPTO will also implement a new procedure for reconsidering patents after issuance. Within the first nine months from the date of issue, third parties will be able to challenge a patent based on nearly any ground of patentability under a process termed "Post-Grant Review." This procedure will also be conducted by the Patent Trial and Appeal Board.

As a means to reduce vulnerability of patentees to charges of inequitable conduct the USPTO will also provide a provision for a patent owner to initiate post-issuance reconsideration of the patent under a process termed "Supplemental Examination." A key benefit is that information presented during Supplemental Examination cannot serve as the basis for a charge of inequitable conduct.

Introduction of a defence to a charge of infringement by asserting prior commercial use

A defendant in a civil action can assert non-infringement of a patent if the defendant's alleged infringing activities were practiced a year prior to the earlier of filing of the patent application or disclosure of the invention. This provision will be effective immediately for any patent issuing from this date forward.

Permitting third parties to submit to the USPTO information relevant to a patent application prior to the issuance of the patent

A third party can submit to the USPTO a patent or other printed publication materially relevant to establishing the novelty orinventive step of a patent application up to the later of the date of issue of the first Office Action or six months after the provisional publication date. This provision will be effective to any patent application filed after 12 months from the date the bill is signed into law.

Elimination of the defence of invalidity for failing to disclose the best mode

Defendants in a patent litigation can no longer assert invalidity based on the patentee's failure to disclose the best mode of practicing the invention. This provision will be effective immediately for any civil action commenced after the date the bill is signed into law.

Limiting the scope of civil actions based on false patent marking of products

In an effort to reduce the number of false marking suits filed in recent years against manufacturers, charges of falsely marking a product with a patent can only be filed by parties who have suffered a competitive injury by the false marking and cannot be asserted for expired patents. This provision will be effective immediately for all currently pending and subsequently filed civil actions.

The opening of satellite offices of the USPTO

The USPTO will be required to open three satellite offices over the next three years. This provision may permit the USPTO to recruit qualified examiners more easily, and more easily facilitate the ability of patent or trade mark applicants to visit the USPTO to meet with their examiners.

For more information on how these changes could affect you, please contact your attorney or someone in our patents team.

This article was written by Justin Sweetman, an associate in the Auckland office. To contact Justin, please email him on or phone 09 914 6740.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James and Wells is the 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.

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