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Substantive Changes in US Patent Law | 13 June 2011

Patent Law in the US has, for many years, differed from that in most of other countries in several important respects. Now that looks set to change, with new legislation pending before Congress, and the relevant Bill looks likely to be passed later this year, and coming into effect in 2012.

There is no space here to give a comprehensive review of the proposed changes, but main points include:

(a) changing from a “first-to-invent” system (in which, in a conflict between two applicants claiming the same invention, the patent is awarded to the party that can demonstrate the earliest date of invention) to “first-to-file” (i.e. the patent is awarded to the party with the earliest filing date);

(b) under the current law prior “public use” constitutes prior art citable against a US patent application only if that public use occurred in the USA. Under the new law, prior public use occurring anywhere in the world will be citable.

(c) the new law proposes the introduction of a post-grant review within a limited period after the date of grant of a US patent - very similar to “Opposition Proceedings” available against European Patents.

If you would like more information on the proposed US law changes, or advice on how they may affect you, please speak to your normal Nash Matthews contact.