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September 8,
2011
On
Your Mark, Get Set, File! <=
/span>
Congress
Enacts "First-to-File" Rule for Patent Applications
=
The
United States Senate voted in favor of the House of Representativ=
es' version
of the America Invents Act today. Accordingly, both chambers of
Congress have approved the bill and it will now go to President O=
bama
for signature. The President has previously spoken approvingly of=
the
legislation and will almost certainly sign it. It will take effect
one year from the President's signature. Please note that the Pat=
ent
Office will have to enact new rules to cover the extensive changes
required in patent prosecution.
The
new statute is the first comprehensive change to United States pa=
tent
law in almost 60 years, The two primary changes are:
- Most
prominently, the United States will now use a
"first-to-file" patent application system, abandon=
ing
over 200 years of "first-to-invent." Accordingly, a
patent application may be denied because of a publication,
public use, or sale even the day before the filing date. The
one-year grace period formerly used is gone. The inventor ge=
ts a
one-year grace period for his or her own disclosures of the
invention.
- There
will be enhanced post-issuance review procedures available.
Previously, an issued patent could be re-examined only based=
on
published prior art. Under the new legislation, a post-issua=
nce
review can consider both published prior art and non-prior a=
rt,
such as, for example, prior sale or offer for sale.
The
Clark Hill Intellectual Property Practice Group will present a
webinar on the new legislation and its effect on patent prosecuti=
on.
Clark Hill's IP lawyers are ready, however, to discuss the effect=
s of
these and other changes in patent law at any time. If you have any
questions about the new patent legislation or how it impacts your
organization, please contact Tim McCarthy at (312) 985-5561 or tmccart=
hy@clarkhill.com,
or your Clark Hill intellectual property attorney.
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