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16.03.2013

Changes in US-patent legislation – Part III

On September 16th, 2011 the President of the United States of America signed a law called the “America Invents Act”, which changed the US-patent legislation significantly. In addition to changes with effect from September 16th, 2011 and from September 16th, 2012, the following regulations come into effect on March 16th, 2013.

Introduction of the “First inventor to file”- principle

The new “First inventor to file”-principle applies for applications having a filing date or priority date after March 16th, 2013. This principle is largely comparable with the first applicant-principle known in Germany and Europe. The only difference is that generally in the USA - as was the case before - the applicant has to be the inventor at the same time. Accordingly, an inventor is entitled to a patent if he has filed the patent application first, irrespective of the time when he has actually made the invention. A third person who has made the invention earlier but who has filed the application later usually goes away empty handed.

Changes in the definition of the state of the art

For applications having a filing date or priority date after March 16th, 2013 the definition of the state of the art in the USA is comparable to the European or German standard. According to the new definition all disclosures being published in any part of the world before the application date or priority date of an US-application are classified as state of the art, no matter if the disclosures are orally or written. Additionally, all confidential sales carried out before the priority date of a US-patent application are classified as state of the art, as soon as they become public afterwards.

In addition to that, for an according application all US-patent applications having a priority date before the filing date of this particular application constitute state of the art, even if they are published after the priority date. Excluded from this practice are only such applications originating from the same inventor, or in which the same inventor is involved. In contrast to Europe, where according documents are only relevant for the question of novelty of the application, they may as well be considered for assessing inventive step in the US-proceedings.

If an inventor publishes his invention anywhere in the world after March 16th, 2013, he may file a US-patent application within a grace period of one year after the first publication. If he does so, his own publication is not harmful for the novelty of his application. The same holds true for publications of third parties which were made after the first publication of the inventor. It is not clearly ascertainable from the legal text, how the contemplated grace period is started in practice exactly. At present it is therefore strongly advisable not to rely on the grace period of the modified US-patent law.

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