New US Patent Reform is finally a reality – First-To-File among others

On 16 September 2011, President Obama signed the America Invents Act. The reform includes several changes and many of these may be highly relevant to Danish companies as well. Some of the reforms will come into force immediately while others will become effective in 1 year and the First-To-File system in 1.5 years.

The most interesting topics, which will come into force immediately, are:

• General increase in fees. 10 days after signing (i.e. 26 September 2011) all fees increase with 15%.
• Also effective from 26 September 2011 it is possible to request "Prioritized Examination" against payment of USD 4,800.
• Discount for private individuals and small companies. From 16 September 2011 a Micro Entity discount of 75% was implemented in addition to the Small Entity discount of 50%. A Micro Entity is a Small Entity with no more than 4 prior US patent applications and an annual income of maximum 3 times the average household income in the USA.
• Effective immediately, the defence counsel in an infringement trial can no longer declare a patent invalid for not complying with the requirements for showing "Best Mode" of the invention. Patent applications must still show Best Mode to obtain grant, however, in future the USPTO will decide.
• Also effective immediately the possibility of suing others for marking products with patents they do not have will be limited. From now on only the state or a competitor with an actual loss can sue for false marking of products.
• "Human organisms" are no longer patentable. This is effective immediately also for pending applications not yet granted.

We will elaborate further on the 1 year and 1.5 years changes later, however, we would like to mention the following:

• As mentioned the "First-To-Invent" principle is being replaced by the remaining world's "First-To-File" principle. This will only apply to applications filed in 1.5 years from now or later. The law retains a one-year grace period. Furthermore, there are some interesting changes regarding patentability, e.g. regarding prior use outside the USA and also regarding the necessity of an early filing date in the USA.
• As of 16 September 2012 a different system for re-examination, etc. will be introduced as an opposition period of 9 months after grant is implemented. During this period any third party may request a "post grant review" and at the same time the "inter partes re-examination" is changed into "inter partes review" which can only be requested after expiration of the opposition period. There will be other changes in the re-examination system and the demand for many signatures from inventors in connection with filing will be adjusted as well.

Please feel free to contact us if you need further information or counselling about the meaning in specific situations. Further information, including the signing session, may be found at www.uspto.gov/aia_implementation/index.jsp