Considerations in View of the New US First-Inventor-to-File Patent System

December 2011Articles Regulatory Focus

The US patent system has a rendezvous with change. On 16 March 2013, it will officially change from a first-to-invent to a first-inventor-to-file system as authorized by the Leahy-Smith America Invents Act. Under the current first-to-invent system, a patent is awarded to the inventive entity that invents first. In contrast, under a first-inventor-to-file system, a patent is awarded to the inventive entity that is the first one to file a patent application on its own invention.

The act is an attempt to reduce economic and time burdens associated with pursuing and enforcing patents with the intent of improving patent quality and minimizing litigation costs in the US. However, international harmonization efforts also appear to have been a strong force behind the Leahy-Smith America Invents Act. The act was passed by Congress in a rare bipartisan bill on 8 September 2011, and signed into law by President Obama on 16 September 2011. It is perhaps the most sweeping set of revisions to US patent law since 1952.

In general, every country has its own patent law structure and determines patentability of inventions independently of determinations made in other countries. However, the examination of patent applications can be somewhat streamlined when different countries have similar laws with respect to patentability. This act brings the US patent system more in line with those of other countries. For example, the US was the only country with a first-to-invent system. All other countries review patent applications on a first-to-file basis.

The act introduces several changes to patent statutes that impact the patent procurement process. It is an effort to provide patent applicants more certainty in developing their global patent strategies and is intended to help patent-sensitive sectors of industry manage and meet the demands of a globalized economy more efficiently.

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