The state of the United States’ patent system has been pretty static since 1952, other than some case law explaining what can and cannot be patented. However, the system itself hasn’t really changed. The America Invents Act, 125 Stat. 284-341, significantly changes the system. A breif, and by no means complete (for isntance, the expansion of prior art is outside the scope of this post), review of this new law follows.
In short, the Act switches the patent system from a first to invent system to a first to file system. Further it eliminates interference proceedings and further developes post-grant opposition proceedings. This Act puts the United States patent system in greater sync with most patent systems in the world. The Act goes into effect on March 16, 2013.
First to File
Before the Act the first person to invent a patentable invention was entitled to the patent on that invention. Under the America Invents Act, and its restructuring of the system, the first person to file the patent application gets the patent. The practical consequence of this is that if two people invent at nearly the same time, the first to file the application will get the patent. In the past, there would be an argument to determine who had actually invented it, and the inventor who won would be awarded the patent.
In the past, there were ex parte reexamination procedures. Under the new Act, this will be retained and in addition there will be the ability to submite prior to issuance and expands the inter partes reexamination, as well as adding post-grant review.
What Can Inventors Expect?
You can expect to have much more narrowly claimed inventions. There will likely be less time spent trying to claim as much as possible under the patent, and there will be a race to the USPTO with claims that are appropriate. In addition, those persons falling in the “micro-entity” category are allowed a 75% discount on patent fees paid to the USPTO during the prosecution process. However, these smaller entities may have trouble beating those with sophisticated legal counsel or large patent departments to the filing with the USPTO.