Under previous US patent law, parties that could prove they invented a product or process first were granted patent protection over parties that could not, regardless of which party first filed for protection with the US Patent and Trademark Office (USPTO). The America Invents Act (AIA) will replace this system with a first-to-file arrangement, meaning that, whichever party first files for protection (if all is in order) will obtain the patent, regardless of who first invented the product or process.
In addition, the AIA will expand the types of prior art that can be cited against a US patent application during examination. The Act will also introduce Post Grant Reviews, a new process in the US whereby validity of patents can be reviewed within nine months after a patent is granted. Currently, no such system exists and to challenge the validity of a US patent, parties must bring civil actions against the patentee.
Philip Martin, Cambridge Patent Attorney and Partner at Marks & Clerk, comments: “The US is such an important market for companies in Cambridge and this is such a fundamental change to the US patent system that all businesses need to take note of these developments. Cambridge-based organisations will no longer be able to rely on being the first to invent a product or process if they want patent protection in the US. Instead, they need to be absolutely on top of their protection strategy and be the first to file.
“Under the old system, if you invented a new and innovative household appliance and wanted to market it in the US, and you saw someone else selling your appliance with their own US patent, you could potentially have challenged them if you had records proving you were the first to invent. Now, whether you invented the appliance first or not, you will need to be first in the queue at the patent office to ensure no-one else patents your invention before you.”
Philip Martin continues: “By adopting the first-to-file system, the US is actually bringing its patent regime into line with much of the rest of the world, including Europe and Asia. As such, many businesses over here will already be used to the requirements of the new system. The first-to-file system provides more certainty for patent applicants, and removes the need for businesses to keep track of when inventions are first made. This removes a significant practical burden.
“Many of our clients have increased their patent filing volumes in the US in anticipation of the new system, and many US patent attorneys have told us they have been working flat out as organisations rush to file for protection on their inventions before the AIA comes into force.”
About Marks & Clerk (Cambridge)
www.marks-clerk.com
Recognised as one of the world's leading intellectual property firms, Marks & Clerk has Cambridge’s largest office of patent and trade mark attorneys. Established in 2002, the firm’s Cambridge office is the city’s leading provider of IP services. Its patent and trade mark attorneys, together with its commercial IP solicitor from the firm’s associated firm of solicitors, Marks & Clerk Solicitors, offer clients a comprehensive range of intellectual property services – covering patents, trade marks, designs and copyright. This includes obtaining protection worldwide, portfolio management, strategic advice, commercial advice, licensing, enforcement, due diligence and litigation. Marks & Clerk has expertise across the full spectrum of commercial sectors and technologies.
With a network of 17 offices across the UK (nine locations), Europe, North America, Asia and Australia, and long-established relationships with other leading IP firms worldwide, Marks & Clerk is able to meet clients' IP requirements on a local and global basis.
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If you would like to speak to Philip Martin at Marks & Clerk, please contact:
Richard Holme
Marks & Clerk
E: rholme@marks-clerk.com
T: +44 (0) 7795 651708
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Businesses faced with 'fundamental change' in the way they protect inventions in the US
18 March 2013
From Saturday (16th March), organisations looking to protect their inventions in the US face significantly different requirements in the ways they apply to protect their products and services under US patent law. In particular, the US first-to-invent system has been replaced by the more widespread first-to-file system.