US adopts ‘first-inventor-to-file’ intellectual property rule

The changes bring US law into greater conformity with the laws in the rest of the industrialised world, according to Withers & Rogers.

The intellectual property law firm believes that among the key legislative changes, US patent law is adopting the ‘first-inventor-to-file’ rule, which applies in Europe.

Until now, any dispute about the ownership of a patent for an invention was decided in favour of the person able to prove that he or she came up with the invention first.

This approach led to costly litigation to establish the dates of the invention.

Instead, US law will mirror the legal position in Europe, with the right of ownership going to the first person to file a patent application. This change will take effect in 18 months’ time.

According to Dave Croston, patent attorney at Withers & Rogers, the changes will be welcomed by companies seeking patent protection for their inventions in the US and could mean applications are dealt with more quickly.

’The changes are being phased in over a period of 18 months, so there will still be some uncertainty for a time,’ said Croston. ‘However, ultimately it makes sense to bring US patent law closer to legislation that applies in other parts of the world and it is likely to make things much less contentious.

‘The United States Patent and Trade Mark Office (USPTO) is also taking the opportunity of this overhaul of patent law to make some changes to its fee structure and the way the organisation can use the funds it generates. These changes should help the organisation to tackle the massive backlog of pending US patent applications, which currently stands at over 600,000.’

The incoming legislation is adopting stricter rules relating to ‘prior disclosure’.

The USPTO is said to be adopting the ‘absolute novelty’ rule, which means that prior disclosure anywhere in the world, not just in the US, may now be used to challenge a US patent.

This rule already applies in most other jurisdictions. The grace period that has traditionally applied to disclosures made in the 12 months prior to filing a US patent application is also being removed unless it can be proved that the disclosure was made by the named inventor.

In addition, third parties will also be able to object to a US patent for up to nine months after it has been granted, which is similar to European Patent Office opposition proceedings.