Highlight US patent reform

Some main features of new US patent reforms

First to File

The biggest change to US patent laws, and certainly the most discussed, is the fact that the United States has now converted from a first to invent system to a first to file system. Saying that we have a first to file system, however, might be a little misleading given that the term “first to file” has certain international meanings that will not apply.

A traditional first to file system is one that demands absolute novelty in order to obtain a patent. A traditional first to file system means that if there is a prior use or publication of information relating to the invention no patent can be obtained. That, however, is not what the US first to file system mandates.

New US patent Law 103

Nonobvious Subject Matter: The new law would rewrite Section 103 as follows

• A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

One shift in the nonobviousness statute merely codifies the current law's focus on “claims” rather than the “subject matter sought to be patented.” We'll hope that courts will not interpret the phrase “the claimed invention as a whole” as requiring the courts to examine the entire claim-set as a whole.

The most important change is that the new provision considers obviousness as of the “effective filing date” of the patent claims being considered rather than “at the time the invention was made.” Of course, the courts already ignore the language of the statute and allow post-invention 102(b) prior art to be used for obviousness analysis.

Hilmer doctrine and US patent reform

The Hilmer Doctrine

The current version of 35 USC § 102(e) provides

A person shall be entitled to a patent unless—

(e) the invention was described in – (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent . . . except that an international application . . . shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published . . . in the English language

US PATENT REFORMS

Bringing an end to a long history of bungled reform attempts, President Barack Obama today signed a sweeping reform bill into law that promises to change the system for determining priority for inventions at the U.S. Patent and Trademark Office. Formally known as the America Invents Act, the law also aims to shore up more financing for an agency that's suffered through years-long applications backlogs and out-of-date computer systems.

"I think it's a positive move," says Gary Griswold, the former Chief Patent Intellectual Property Counsel for 3M and spokesman for the Coalition for 21st Century Patent Reform, a business lobby group based in Washington, D.C. "It provides for higher quality patents and a more rapidly performing Patent Office."

35 USC § 102 and the First to File System

The Details of the New First to File System
The details of the new first to file system are embodied in a brand new and very different 35 USC § 102 and 35 USC § 103. Learning the new system begins most logically by firmly grasping when the old 35 USC §§ 102 and 103 apply, or if the new 35 USC §§ 102 and 103 apply. If you are an experienced patent professional, then you come to this task with an intimate understanding of the ins and outs of old 35 USC §§ 102 and 103. Whether you have that facility or not, understanding new 35 USC § 102 probably should to start with reviewing old 35 USC § 102, and then comparing the similarities and differences.