America Invents amendments to the US patent system

At the start of this week the US Senate gave overwhelming support to the America Invents Act of 2011 (“Bill“) that proposes to overhaul the entire US patent system.  A copy of the Bill can be obtained here.

The key provisions of the Bill include:

• Transition of the US patent system from a first-to-invent system to a first-to-file system.  This shift will bring the US in line with much of the rest of the world by conferring patent rights on the inventor who is first to file a patent application for the invention in the US Patents and Trade Marks Office (“USPTO“) rather than on the first inventor.  This change is intended to significantly reduce the costs and complexity of patent disputes over who invented first.
• USPTO fee setting and fee diversion.  The Bill provides greater scope for the USPTO to set fees for patent and trade mark applications, which previously required the approval of Congress.  The Bill also proposes to end the current fee diversion which saw a large proportion of USPTO fees being diverted away from the USPTO to other government departments.
• Post-grant review.  The Bill introduces a new process for quasi-judicial proceedings, presided over by the Director of the USPTO, to be commenced within the first 9 months of the granting of a patent to review any of the grounds upon which the patent was granted.
• Prior art.  The Bill proposes a system whereby third parties are entitled to submit prior art to the USPTO for consideration when assessing a patent application.  These amendments are intended to create a procedure for a ‘supplemental examination’ of a patent to allow the patentee to make pre-litigation disclosure of prior art to the USPTO which was not disclosed during the original examination of the patent.

It is hoped that the reforms (if passed by the US House of Representative and if given Presidential approval) will result in significant improvements to the efficiency of the USPTO, which currently has a backlog of over 700,000 patent applications.  The changes will also more closely align the US patent system with the Australian patent system and others around the world.

The Bill is now to be considered by the House of Representatives.