By Chris Mitchell and John S. Artz
The America Invents Act (“AIA”), which went into effect September 16, 2011, has brought, and continues to bring, some of the most significant changes to the U.S. patent system since the first U.S. patent was issued in 1790.
Under the AIA’s rolling implementation, we have already seen new law go into effect, on the AIA’s enactment date. Next month we will see significant changes to the way patents are challenged in the U.S. Patent and Trademark Office (“USPTO”). Finally, next March the U.S. will go from being a “first to invent” country to a “first to file” country. In this article, we look a little closer at the changes yet to come.
It is currently possible to challenge an issued patent under a process known as reexamination. Presently, reexamination comes in two forms: Ex parte reexamination, in which the requesting party is involved only in instituting the reexamination; and inter partes reexamination, in which the requesting party has more of an adversarial role and, accordingly, greater opportunity to comment during the process.
Under the AIA, ex parte reexamination will continue on unchanged and may be requested at any time. Not so for inter partes reexamination. As of September 16th, inter partes reexamination will cease to exist entirely in favor of “inter partes review.”
Just over a little 6 months from now, the last, most significant change to the U.S. patent system will take place. On March 16, 2013, the U.S. will become a “first-to-file” country. Related to our move to a “first-to-file” country, the novelty provision of the Patent Act will change to create an absolute bar to patentability if the claimed invention of a patent application was “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” anywhere in the world before the patent application’s effective filing date.
To learn more about the upcoming changes to patent law, check out the full article here.
