At least before March 2034 15, the actual operation of American patents will involve both the original law and the n
At least before March 2034 15, the actual operation of American patents will involve both the original law and the new law. In addition, practitioners must track all the different effective dates in order to provide the best advice for customers to manage the US patent portfolio.
* * * There are many significant changes in the American Invention Act (AIA), which came into effect on September 6, 20 1 1. This is the first major reform of American patent law since the implementation of 1952 patent law. This paper will focus on some important changes, such as the inventor's first application system and the new definition of existing technology.
Change 1: the inventor's first application system
Before the promulgation of AIA, the United States was the only country in the world that adopted the patent "first invention system". All other countries adopt the "first application system" for patents. After the implementation of AIA, the effective filing date of the claim starts from March, 2065438 16, and thereafter * * * that is, 18 months after its promulgation * * * will adopt the "inventor's priority application system". These patents will be granted to "inventors or discoverers", and AIA still provides a one-year grace period under certain circumstances.
Variation 2: New definition of existing technology
The newly revised U.S. Patent Law No.35.C. The amendments to Articles 102 and 103 basically define the prior art of these patents. The geographical and language restrictions in article 102 before AIA were cancelled. The prior art basically constitutes public disclosure and disclosure of some specific patent applications that are the subject of "effective application" before the "effective application date". The change of "effective filing date" means that, on the one hand, the scope of existing technology is wider, because the effective filing date under AIA is always later than the invention date before AIA; On the other hand, the existing technology will be less, because the patent law before AIA is 35 U.S. patents. C. Other people's prior inventions under articles102 * * * f * * and * * g * * * no longer constitute existing technology ... In addition, according to the revised AIA, article 103 is not obvious.
According to the newly revisedNo.102 * * * c * *, if the disclosed subject matter and the invention under the claims were developed and created by one or more parties to the joint research agreement that came into effect on or before the effective filing date of the invention under the claims, the combination of the disclosed subject matter and the invention under the claims shall be regarded as owned by the same entity. According to the law before AIA, the relevant date refers to "the time of invention and creation". Changing the date to "on or before the effective filing date" will enable the applicant to actively deal with the potential problems in Articles 102 and 103 before the application. In my opinion, we can refer to the item * * * b * * * * * * 2 * * * * c * * * in 102 to understand how to expand the use of * * * to overcome some problems under102 * * * * * *. The newly promulgated Article 102 * * * d * * of the United States Patent Law eliminates the need to file a U.S. provisional application based on a non-U.S. application, because according to Article 1 19 or Article 365 of AIA, the filing date of a non-U.S. application is regarded as the "effective filing date", regardless of whether the application is filed outside the United States or in any language.
Change 3: Post-authorization procedure
AIA proposed a new post-authorization review * * * Post-authorization review, referred to as PGR*** and multi-party review * * * partial review, referred to as IPR*** applicable to patents and claims whose effective filing date is 12 September or later. The current multi-party review procedure will be replaced by multi-party review ***IPR***. Unilateral review remains unchanged, except that the Patent Trial and Appeal Committee decides to appeal instead of the original Patent Appeal and Intervention Committee. From 2011September 16, the standard for granting multi-party reexamination requests was changed from "substantial new patentability issue" to "reasonable possibility of winning the case" to keep consistent with the intellectual property standards. The criteria for starting PGR will be "evidence of superiority". This standard can be interpreted as "great possibility" and may be lower than the standard of "reasonable possibility of winning the case".
Change 4: Supplementary review procedures
In order to try to help the patentee solve the problem of potential unfair behavior after the patent is granted, AIA puts forward a scheme, that is, the patentee can submit a supplementary patent examination to the US Patent and Trademark Office to review, reconsider or correct the information considered to be related to the patent. Under the following circumstances, the patentee will be proved that there is no improper behavior according to the above information in the subsequent litigation: the patentee's request for supplementary examination is rejected; Or the patentee's request for supplementary examination is approved and re-examination is announced, and the patentee confirms that the information submitted in the request cannot undermine the patentability of the original claim or the revised claim. Supplementary examination is applicable to patents issued before, on or after the effective date of September 20 12 16.
The author believes that for patent practitioners, the key is to remember that at least before March 15, 2034, the actual operation of American patents will involve both the original law and the new law. In addition, practitioners must track all the different effective dates in order to provide the best advice for customers to manage the US patent portfolio.