The America Invents Act, which was just passed, is the largest change to the patent system since the 1952 patent law revision. While you have probably heard about some of the changes, there are a few that are likely to have the most significant impact on inventors and patent practitioners.
The first change is that the United States is adopting to a system that awards a patent to the first-inventor-to-file rather than the first to invent. There has always been good reason to file a patent application promptly, but now it is particularly important to get your patent application filed as soon as possible since delays present a risk that someone else could file first. While this brings the U.S. into conformity with the rest of the world, there is still one difference. There is a one year grace period for public disclosures by the inventor before filing a patent application; these disclosures will not count as prior art against the inventor.
The second change creates a defense to patent infringement based on prior use. Previously, if a manufacturer decided to keep a process a trade secret and a later inventor patented the same process, the inventor would have been able to prevent the earlier manufacturer from practicing the process. This presented a real dilemma to the trade secret holder as to the best way to protect the process. Under the new law, if the manufacturer has performed the patented process more than a year before the filing date or public disclosure date of the invention, then the manufacturer is entitled to continue using the patented process without infringing the patent.
The third change alters the existing post-grant review process and creates a new post-grant review process for patents. Inter parties re-examination has been renamed inter partes review, which generally must now be started within nine months after the grant of the patent. The review is now a judicial proceeding before the Patent Trial and Appeal Board instead of before an examiner; and the Patent Office must complete it within one year. In addition, the threshold for initiating an inter partes review has been raised. The director must determine that there is a reasonable likelihood that the requester will prevail with respect to the invalidity of at least one challenged claim. As before, the challenges must be based solely on patents or other publications; non-published information cannot be used.
A new post-grant review has been created that allows challenges based not just on patents and publications, but also on other factual evidence that could relate to invalidity of any claim. Like the inter partes review, the request for a post-grant review must be filed within nine months after the grant of the patent. The threshold for a post-grant review is that it is more likely than not that at least one claim is unpatentable. This review is also conducted as a judicial proceeding before the Patent Trial and Appeal Board. The hope is that these post-grant review proceedings will provide parties with a quicker and less expensive alternative to patent litigation. It will be important to monitor a competitor's issuing patents to determine if a post-grant review should be pursued before the nine month deadline.
Not only can third parties challenge granted patents, the fourth change allows third parties to submit patents or publications to an examiner for review during the prosecution of the patent application. This could prevent some patents from improperly being granted.
The fifth change allows an application to be filed by an assignee. This makes it easier for a company to file an application when an inventor is not available or refuses to sign the declaration.
The sixth change makes false marking suits much more difficult to win. There must now be a competitive injury shown, and expiration of a marked patent is no longer considered a violation. The hope is that this change will end the current spate of nuisance false marking suits.