16 March 2013 will see the implementation of the last set of changes to US patent law under the America Invents Act. As widely reported, the principle changes relate to the fact that the U.S. patent system is changing from a "first-to-invent" to a "first-to-file" system - a system which, in principle, is familiar to, and well understood by most patent practitioners outside the US. But also relevant to patent applicants outside the US are the changes in the relevant prior art base to be considered in respect of the patentability of claims, and the introduction of patent opposition procedures.

Any patent applications filed in the US and having a priority date, established even outside the US, before March 16, 2013, will fall under the current law, while those filed on or after March 16 that do not properly claim priority to an application filed before that date will fall under the new laws.

For applications currently contemplated but not yet filed, and for which the US will be a significant jurisdiction, it will be advantageous to obtain a priority date which is prior to 16 March 2013.

Under the new law the following changes will occur which will impact the manner in which the validity of a US patent claim is determined:

  • The scope of the applicable prior art base will be broadened. U.S. patents, U.S. publications, and PCT publications can be prior art under the new law as of their earliest filing date anywhere in the world. This eliminates the current possibility that patent publications may not be prior art until they have US-based filing date. In addition, the prior art base will henceforth include public disclosures and on-sale activity occurring anywhere in the world.
  • The current one-year grace period, which previously removed some prior art references, will be more limited and will be available only in respect of public disclosures linked to the inventor.
  • Patents issuing from applications filed on or after 16 March 2013 will be subject to challenge by others under a post-grant inter partes opposition process: again a process familiar to many practitioners outside the US.

To reiterate, for patent applications filed outside of the U.S. on or before March 15, 2013, corresponding applications can be filed in the U.S. within the one-year anniversary of the initial filing and will be eligible to be handled under existing laws. For more information or advice, please call us.