Patent Alert – Changes to the US patent system

The Leahy-Smith America Invents Act has introduced some very significant changes to the US patent system.  Some of the more important changes are listed below.

As of 16 March 2013, the US patent system will give priority to the first filed patent application.  Previously a US patent application by the first inventor was given priority. It is now more important to establish a priority date – by, for example, filing a provisional US or Australian patent application – for new inventions in a timely manner.

Anything made available to the public anywhere and in any way is now prior art.  Previously, some prior publications foreign to the US were ineligible as prior art for a US patent application.  A quality prior art search is advisable so that applications can be prepared in view of the prior art.

The one-year “grace period” for self-disclosure of the invention is relaxed, now being calculated from the priority date.  Consequently, disclosure within 1 year of a relied upon priority document – including an Australian provisional – may not invalidate the US patent application.

A publication, made by the inventor, that discloses the invention less than 1 year before the inventor files a US patent application, disqualifies intervening disclosures and US patent applications as prior art.  Another publication by a competing inventor published between the publication and the application by the inventor will not invalidate the inventor’s US application.  Effectively, a publication by the inventor has some qualities similar to a provisional patent application but only for the US. Prior publication will still invalidate a European patent application, for example.

A US patent application can now be filed in the name of an entitled person other than an inventor.  For example, a company can now be an applicant for a US patent application.

For further information please contact Justin Blows, by telephone on 0410 013 089, or email j.blows@phoenixip.com.au