Emeryville, California (EastBayDaily) — Congress recently enacted legislation changing key provisions of patent law. The bill, called the “America Invents Act” (HR1249), changes the patent award application to award the first person to apply instead of the first person to invent, allows for more public feedback on applications, creates new rules for challenging patents, and changes the patent fee system. The expert patent attorneys of Bay Area Technology Law Group explain how the provisions in the bill changes patent law in the United States.
“Although the U.S. patent laws have been tinkered with over the years, there have not been significant revisions to the law since 1952,” says Malcolm Wittenberg, an intellectual property attorney at Bay Area Technology Law group. “That is about to change.”
The most notable change is a move from a “first to invent” to a “first to file” patent granting system, which is more in keeping with patent laws of other countries. In contrast to most other countries, though, the U.S. system retains a grace period such that an inventor who discloses an invention publicly in some manner has twelve months to file a patent application and claim first-inventor-to-file status. This provision, however, may not be as useful as it might seem at first at first blush, for public disclosure before filing will oftentimes adversely affect foreign filing opportunities. The commercial use infringement defense is also expanded to cover any technology, rather than just business methods as provided in 35 USC 273, including pre-marketing regulatory review for drugs and “non-profit laboratory use” such as by universities or hospitals, instead of only covering prior commercial use.
The new bill also establishes post-grant opposition protocol and provides a new “first window” post-grant review procedure allowing challenges within nine months of an issued patent on any ground. It also provides a revised inter parties review procedure with a high threshold for the US Patent and Trademark Office (PTO) to accept a challenge.
There is a new a “supplemental examination” provision which is, in effect, an ex parte reexamination initiated by the patent owner allowing the patent owner to make pre-litigation submissions to the PTO to potentially correct mistakes and disclosures during prosecution. Submissions of the patent owner could not then be used to support an inequitable conduct defense in patent infringement actions.
For the first time, an alleged infringer is not able to argue that the patent owner did not identify the best mode for enablement in the patent specification. “This again is in keeping with the patent laws in most other countries which do not have a best mode requirement,” explains Wittenberg.
The law provides significant changes to the fee system of the patent office, starting with an across-the-board 15% fee hike. Prosecution of an application can now be expedited by the payment of a “prioritized examination” fee, which accelerates processing with a likely decision on the invention’s patentability within one year from the application filing date, compared to the current average of just under three years. The fee is initially $4,800, with small entities receiving a 50% discount.
The new law also creates a “micro-entity” category composed of individuals and small businesses that file few applications and earn less than a certain threshold. Such applications now benefit from a 75% reduction in most patent fees.
“Like all new legislation, many of the details of these revised patent laws will be scrutinized during litigation. For example, it is difficult, in the abstract, to know just what level of public disclosure will be necessary in order to provide the twelve month grace period to file a patent application and claim first-inventor-to-file status,” notes Wittenberg. “The courts will also undoubtedly tell us more about the defense to infringement based upon prior commercial use as provided in 35 U.S.C. Section 273.”
For more information about the new changes to patent law or any of Bay Area Technology Law Group’s products or services, call them at (415) 868-4682 or visit them online at http://www.batechlaw.com.
About Bay Area Technology Law Group Bay Area Technology Law Group is a law firm focusing exclusively on the practice of intellectual property law.
The firm’s intellectual property, patent and trademark attorneys, Malcolm B. Wittenberg, Bill Wigert and Nathan Koenig have, between them, almost 100 years of experience in this area of the law. The firm is capable of working in virtually any field of technology and with offices in San Francisco and Sonoma County, is dedicated to servicing the intellectual property needs of the San Francisco Bay Area.
Bay Area Technology Law Group