America Invents Act replaces first-to-invent system with first-to-file system
Organisations looking to protect their inventions in the US now face significantly different requirements in the ways they apply to protect their products and services under US patent law.
In particular, US Congress decided to replace the first-to-invent system as part of a larger 2011 patent reform law known as the America Invents Act (AIA). The first-to-file system, which is used by every other country in the world, took effect on 18 March.
Under previous US patent law, organisations that proved that 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 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.
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. No such system currently exists and to challenge the validity of a US patent, organisations must bring civil actions against the patentee.
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
Dr Maureen Kinsler, Patent Attorney and Partner at intellectual property specialist Marks & Clerk, said: ‘The US is such an important market for the UK and this is such a fundamental change to the US patent system that all businesses need to take note of these developments. 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.’
Dr Kinsler continued: ‘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.
‘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.’
Dr Kinsler says 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, which removes a significant practical burden.