Most comprehensive patent reform in almost 60 years approved by US senate

In Insights, Uncategorized

11 March, 2011

Most comprehensive patent reform in almost 60 years approved by US senate

Historic breakthrough as USA gets to grips with “first-to-invent”, the enormous backlog of patent applications and simplifying procedures for filing patents in the USA.

On Tuesday 8 March 2011, the US Senate voted to approve the nation’s most comprehensive patent reform since 1952, entitled the “America Invents Act of 2011”. Among many other changes, the reform adopts a “first-to-file” patent system that is more in line with patent practice throughout the rest of the world. The next step in the legislative process is a vote by the House of Representatives.

According to long-held principles of the existing patent law, patents in the US have been awarded according to the “first-to-invent” principle. One consequence of this regime has been that researchers and developers have been forced to keep careful logs of their inventions to be able to prove that they were the first to develop a particular product or technology. In Europe and in most of the rest of the world, there is instead the “first-to-file” principle, which simply means that a patent is awarded to the first of multiple independent inventors to apply for a patent.

Among many proposals in the new legislation package, the most significant change, at least as far as us Europeans are concerned, is the endorsement of the “first-to-file” system. Intended or not, this signals that the US patent laws are becoming more like the European model (or, more correctly, the model used by the rest of the world). Another important change is the introduction of more ways to question the validity of a pending or granted patent without having to engage in a full-blown court trial. Other measures are directed to dealing with the nation’s massive backlog of patent applications (more than 700 000 at the latest count).

In my opinion, the new law (if passed) will eliminate some of the difficulties that small European companies and individual inventors have when filing for patent protection in the US, because of the differences in our respective systems. The shift to a first-to-file system will also, in time, make it easier to ascertain who is the rightful owner of a third-party patent. This should make life somewhat easier for small research companies and individual inventors. For example, the change removes one of the main reasons for having to write up detailed lab journals, and it will also make it cheaper and simpler to question the validity of blocking patents.

There are also minor amendments that aim to make the process as a whole less bureaucratic, such as a relaxation of the requirements for inventor signatures on filing. In my mind, foreign and US firms alike will benefit from the increased harmonisation and simplified rules, and the changes will make a big difference for everyone who applies for, prosecutes, trades in or litigates patents in the US.

Various efforts have been made over a number of years to push through this major overhaul of US patent law. As recently as in 2009 the proposal reached the House of Representatives without being enacted into law on that occasion. Now that the Senate has said yes to the proposal, the next stage is for the House of Representatives to vote on the issue. Spokespersons for the Senate Judiciary Committee say that a proposed bill is just around the corner.

In a comment from the White House, President Barack Obama says that he is pleased that the proposal has been approved, describing it as “the most significant patent reform in over half a century”, according to Reuters.

Niklas Mattsson, European Patent Attorney, Partner

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