On 8 September 2011 the US Senate officially approved the America Invents Act (AIA). The American system will pass from the current first-to-invent model to the first inventor-to-file model for US patent applications starting from 16 March 2013, thus conforming to the system currently used in all other countries.
As a consequence, the right to the grant of the patent will no longer belong to the first person who demonstrates that he/she has conceived and realized the invention, irrespective of whether or not he/she has filed a patent, as happens now, but to the person who first files the patent application.
Apart from the above, the US patent reform also introduces the following main changes:
- The requirement whereby any previous and public use must have occurred “in the United States” in order to be considered prior art for invalidation purposes is eliminated. Therefore, all prior uses, irrespective of where they were made, can be considered invalidating prior art.
- All previous patent applications will be considered as invalidating prior art even if they have a non-US priority.
- Published patents and patent applications belonging to more than one subject, or those resulting from mutual research agreements, will be considered as having the same level of inventive activity.
- The “period of grace” for disclosures by the inventor or any of his assignees will be extended to one year before filing.
For all US patent applications with a priority prior to 16 March 2013, the old US patent law will be applied. For all US patent applications with a priority prior to 16 March 2013 but which have even only one new claim, not supported by the original priority text, the new patent law will apply. It is the responsibility of the applicant to point out to the USPTO any such differences so that the Office can apply the correct law.
Authenticated copies of priority applications
For every patent application subsequent to 16 March 2013, it will be necessary to claim priorities within the fourth month of the filing date in the US, or within 16 months from the filing date of the priority application. Within this period it will also be necessary to file an authenticated copy of the priority application.
The above points are a very short summary of the imminent modifications to US patent laws. For any further information please do not hesitate to contact us.