The U.S. Patent and Trademark Office took another important step to transitioning the U.S. patent system from a “first to invent” system to a first inventor to file system. The USPTO also proposed amended rules of practice and examination guidelines to inform the public and patent examiners of its interpretation of the first-inventor-to-file provision of the American Invents Act.
“The first-inventor-to-file provision of the America Invents Act, one of its hallmarks, brings greater transparency, objectivity, predictability, and simplicity in patentability determinations,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. “At the same time, the provision brings the United States closer in harmonizing our patent law with those in other countries around the globe,” he added.
As further detailed in the Notice of Proposed Rulemaking, the rules of patent practice will be amended to reflect the following changes made by the AIA:
- Convert the United States patent system from a ‘‘first to invent’’ system to a ‘‘first inventor to file’’ system;
- Treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the U.S. or in another country;
- Eliminate the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and
- Treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. § 102, as well as 35 U.S.C. § 103
The USPTO is accepting comments on the proposed rules until October 5 and plans to discuss the rules during a series of “roadshows” this fall.
The first-inventor-to-file provision is scheduled to take effect March 16, 2013. This significant change in the patent rules should be accounted for in your business practices if you rely on patents as part of your intellectual property protection. If you or your business have a patent disclosure and are not sure how the change in the patent rules will affect you, contact an attorney at Sheldon Mak & Anderson for more information.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge - and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
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