US Gets in Line: Patent Reform

Changing to a first to file system for patents has been a long time coming in the USA but was finally signed into law in September 2011 (Leahy-Smith America Invents Act (AIA)).

The changes which come into effect on 16 March 2013 mean that the US will move from a first to invent system of determining who obtains patent rights to a first to file system. This is in line with Australia and most of the world which have first to file systems.

The first to file system is much simpler than the first to invent system.

Under the first to invent system in place in the US until 2013, if you invent a new process for example, and you delay applying for a patent, you risk losing rights in the invention to another person who independently comes up with the same process. If the person acts quickly with due diligence and applies for a patent then he may obtain the rights.

Determining which party gets the rights under a first to invent system can be very complicated. It depends on factors such as the date of conception of the invention, the time of reduction to practice (bringing the invention into practical effect), due diligence in pursuing patent protection and in developing the process. One person may conceive first but take a long time to reduce to practice whereas the other may conceive later but reduce to practice very quickly. Bringing all of this evidence to a court proceeding to determine who should have rights in the invention can be very expensive.

The first to file system is much more straightforward. If two parties have developed the same invention, all other factors being equal, the party with the earlier filing date obtains the rights.

This will be a positive development for Australians who find themselves in dispute with another party over entitlement to patent rights in the USA.

For information on the AIA see the United States Patent and Trademark Office website

© Julie Harkins 2011