THE AMERICA INVENTS ACT (AIA): A MAJOR CHANGE IN THE AMERICAN PATENTS SYSTEM
In the United States, on 16 March 2013, the "first-inventor-to-file" system (or “FITF”) will come into effect and replace the current system which grants the patent right to the "first-to-invent".
1. This new system impacts the definition and scope of prior art that can bar patentability. It introduces an "absolute novelty" criterion with a grace period of one year.
More specifically, in the current system, inventors may delay the filing of a US patent application or PCT application designating the United States (PCT(US)) for up to one year from the publication of the invention, or a public use or sale of the invention in the United States, regardless of the person at the origin of the disclosure.
As of 16 March 2013, this one-year grace period will be reserved for disclosures of the invention by the inventor(s). Its scope will also be limited, because the disclosure may only be bypassed if the invention is identical to the object disclosed.
It is important to note that a disclosure of the invention by a third party during the one-year grace period will not prejudice the granting of a US patent as long as said disclosure is preceded by - during the one-year grace period - the disclosure of the same invention by an inventor or a third party in possession of the inventor's or inventors' invention.
2. US patent or PCT(US) applications filed as of 16 March 2013 claiming a priority date before 16 March 2013 will continue to benefit from the current "first-to-invent" system. However, if the US patent application includes, or included at any time (for example during the PCT international phase), at least one claim that does not benefit from priority, the application will then be subject to the new FITF system.
Keeping the benefits of the present system may therefore be advantageous in the event of a disclosure that may prejudice patentability and that occurs less than one year prior to the date of filing in the United States.
3. We therefore recommend the identification of US patent applications (temporary or not) that claim a priority right, filed since 16 March 2012, to examine whether there is an opportunity for an early application in the United States in the form of a national or international submission.
In particular, we recommend an application targeting the United States by 15 March 2013 at the latest:
- in the presence of a disclosure dated less than one year prior to the priority date,
- if the application description arguing priority is to be completed so as to support new claims,
- if you have inventions that have not yet been the subject of a patent application, disclosed in under one year.
We remain at your disposal for any further information you may require.
Contact : Béatrice Holtz, European Patent Attorney
Publication date : February 2013