07Oct 2014

What You Need To Know About The American Invent Act - Post March 2013 By Silvia SalvadoriThe America Invents Act was signed into law by President Barack Obama on September 16, 2011, and took final effect on March 16, 2013. It is an overhaul of the U.S. patent system and serves to more closely align the U.S. system with the way the rest of the world operates. One of the biggest changes enacted is that the U.S. has moved from a first-to-invent standard to a first-inventor-to-file system.

The new rules simplify the process of deciding who gets a patent by ensuring that the first person or business which files for a patent gets the credit for it. The new rules also posit post-grant review processes which enables anyone to challenge a patent for less cost and easier processes than using the older challenge methods.

One controversial aspect of the new rules is that they may have the effect of making it riskier for inventors to publish information on their inventions prior to filing. An inventor was previously allowed a 1-year grace period to publish details of an invention before filing for a U.S. patent (during this time, the information could not be used to invalidate the patent). Under the new rules, publications or disclosure by the inventor are still exempt under the 1-year grace period. However, any 3rd party publications on a slightly different subject matter will become prior art to the post-filed application since prior invention disclosure cannot be antedated anymore. This change may have a real impact on those in academia who have an interest in conducting open research.

Understanding the new U.S. rules is particularly important for foreign inventors and patent applicants. These individuals should consult with lawyers who are well-versed in the new system who can advise them on the best ways to get their patents approved as painlessly and effectively as possible.

For a consultation, contact Silvia Salvadori at silvia@salvadorilaw.com.

Silvia Salvadori, PhDSilvia Salvadori, PhD.
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