Tuesday, 18 September 2012


-Swapna Sundar, IP Dome

On September 16, 2011, President Barack Obama of the United States signed into law the American Invents Act at the Thomas Jefferson High School for Science & Technology in Alexandria, Virginia. The Act amends the Patent Law in the United States and puts in place some unique features. In this article I will explore some of them.

President Obama pointed out in his 2011State of the Union Address: “We know what it takes to compete for the jobs and industries of our time.  We need to out-innovate, out-educate, and out-build the rest of the world.”The America Invents Act (AIA, for short) is to enable the economy to recover by providing the US Patent and Trademark Office (USPTO) with larger resources to speed up the processing of patents and reducing backlogs. This in turn would lead to faster translation of inventions to industrial products, thereby increasing jobs and technology-led enterprises.

The AIA switched to the First-inventor-to-file rule, from the First-to-invent rule and expands definition of prior art, to include public use, sales, publications, and other public disclosures anywhere in the world as of the filing date, other than publications by the inventor within one year prior to filing. Notably prior art includes foreign offers for sale and public use.Also confidential sales of the patented technology will no longer mark the beginning of the 1 year grace period.

The Act revises and expands post-grant procedures while retaining existing ex parte re-examination. Pre-issuance submissions by third parties are added and the scope of inter partes re-examination is expanded and renamed inter partes review. The AIA also adds post-grant review. Another significant change is that while an inventor is still required to “set forth” the best mode for working an invention, failure to disclose a best mode is not a basis for invalidating or rendering an issued patentunenforceable. Insufficient disclosure is no longer a defence against patent infringement

Further, start-ups are will have an opportunity to have important patents reviewed in one-third the time with a new fast-track option that has a guaranteed 12-month turnaround.The AIA added a micro-entity status which includes an independent inventor with a previous calendar year gross income of less than 3 times the national median household income who has previously filed no more than four non-provisional patent applications apart from those the inventor was obligated to assign to an employer. A micro-entity is entitled to a 75% reduction in many of the patent fees payable to the US Patent Office during prosecution of a US patent application. The patent office is expected to develop regulations to identify which fees will be eligible for the reduction and how joint inventors may qualify as a micro-entity.Patents in green technology can be filed at no cost to the inventor.

The USPTO's dynamic Director David Kappos is set to lead America into a new era of Patenting.

*Swapna Sundar teaches a P.G. Diploma course on Patentability of Inventions: US and EU perspectives, at the Nalsar University of Law. NALSAR Proximate education PG Diploma programmes are designed to meet the requirements of professionals in the field of science, technology, media and human rights. For further information go to http://www.nalsarpro.org/


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