Changes to U.S. patent law: what happens next

On Friday, September 16, 2011, President Obama signed the America Invents Act into law.  As described in a previous IP Spotlight post, the new law creates several immediate and important changes to U.S. patent law.  However, some of the most important changes will not take effect until late 2012 or early 2013.  The following is a summary of changes that patent applicants should prepare for over the next 12-to-18 months:

Changes that will take effect September 16, 2012:

• Post Grant Review:  The USPTO will implement a post-grant review (PGR) process in which it may reconsider a patent grant if a petition is filed within 9 months of the date of the grant.  Much like the opposition process that is available in Europe, the USPTO’s PGR process will allow patents to be challenged on any invalidity ground — including prior art, lack of enablement, or inadequate written description.  The petitioner and the patent holder may respond to each other’s filings during PGR, engage in limited discovery, and stop the proceeding through a settlement.  PGR is not available to any petitioner who is also challenging the patent in a court proceeding.
• Employer Corporation as Applicant:  An entity to whom an inventor has assigned (or is under an obligation to assign) the patent will be permitted to file the application instead of (or on behalf of) the inventor.  In addition, if an inventor refuses to assign an oath, an employer or assignee can make the oath upon showing that the entity was entitled to assignment from the inventor.

Changes that will take effect March 16, 2013:

• First to File:  Billed as the most significant change to U.S. patent law, under the new law if two inventors independently create the same invention, the first to file a patent application will get the patent, regardless of which one was the first inventor.  One exception to this rule is that if an inventor publishes details about the invention and then files a patent application within one year of the publication, that inventor will receive priority over other patent applications that are filed after the publication date.  Because of this, the U.S. “first to file” system may be more appropriately called “first to file or publish.” 
• Expanded Definition of “Prior Art”:  Unlike the previous law which provided certain exceptions for foreign disclosures and U.S. publications made within one year of a patent filing, under the new law any third party publication made before a patent application’s filing date may be considered to be prior art.
• Derivation Proceedings:  A new administrative proceeding will allow an inventor to challenge another patent application if the inventor can show that the other patent application was derived from his/her invention.  A derivation proceeding may only be filed against a patent application within one year of the application’s publication date.  Parties to a derivation proceeding may settle and terminate the proceeding, and they may also transfer the proceeding to private arbitration.

Additional changes are likely to become apparent as the USPTO proposes regulations to implement these sections of the new law.