Changes in the US patent law impacting IP business decisions

The American legislature has recently passed the America Invents Act, a long awaiting attempt at patent reform.  While this act contains a number of changes, the following are some of the most important which will impact businesses making patent filing decisions:

  1. The United States, in conformity with most other countries, has formalized a move to a “first to file”, rather than a “first to invent” patent priority system.  The formalization of the first to file priority in the USPTO reinforces the need for patent applicants to file applications as soon as possible lest another contemporaneous inventor should file before them and steal the priority to the patent for the invention.
  2. The Act also enacts a defense to patent infringement based on prior use.  This will enhance the ability of an inventor who chose not to file a patent application for their invention to practice the invention of someone else files and obtains a patent.  There are limitations to this defence but it does provide at least some limited protection for a ”prior inventor/user”.
  3. A number of other changes are included in the Act which creates a post-grant review process for patents after issue, and other changes to the US patent system.  Changes to the examination system for pending applications are also included, which should provide at least a limited ability to fast track some applications.
  4. USPTO fees in respect of a large number of steps are also increased by 15{ea562c2d293a042f3fb4f55dc480c4a82b6a9eb444caad7034b0166480393425} following enactment of this legislation.

How the changes in this Act will in practical day to day terms impact patent holders and third parties in the US remains to be seen, but the formal move to a first to file system will simplify many filing considerations for Canadian and foreign applicants doing business and seeking protection in the United States, as these changes bring that aspect of the US law more on all fours with the patent laws in other countries.