US Patent Law Reform Vs European Patent Law

This is Portion 1 of a multi-portion series exploring the modifications to US Patent law in light of the 'America Invents Act', along with an overview comparison among US Patent law and European Patent law.

During September 2011, US President Obama signed the so-called 'America Invents Act', bringing about important adjustments to US patent law. In some respects, the new Act harmonises US patent law with the patent laws of the other main countries around the globe, and in other instances it just aims to address perceived deficiencies.

1st Alter

One of the important adjustments in US patent law is that the technique will move to 'first to file', rather of 'first to invent'. Europe, the United Kingdom, Australia, China, Japan, Korea and a large number of other patent law systems are 'first to file', and this change brings the US in line with practically all significant industrialised nations of the globe.

This may well be observed as being somewhat detrimental to the individual inventor or smaller small business with restricted funds. An individual inventor filing a Provisional patent application in the USA will presently be charged US$125 by the USPTO, whereas filing an initial 'provisional' patent application in Europe or the UK to merely stake a claim will not incur any official fees. It is also worth noting that an international patent application ('PCT') can also be filed without having payment of the official charges. If the fees are not paid to the UK Patent Office, European Patent Workplace or Receiving Workplace in the case of a PCT, then the respective applications will lapse. On the other hand, and importantly, the priority selection remains, permitting a follow up application to be filed within the first 12 months claiming the date of the earlier application for the original matter.

Consequently, by becoming a 'first to file' country but by not allowing 'free' filings to take location in order to establish priority, it can be argued that the USPTO is making some hardships for those in a much less nicely-off position.

Second Alter

Another major alter to US Patent law is the abolishing of the well-established 12 month grace period to file following very first disclosure in the form of printed publication, public use, sale or availability. The grace period is nonetheless on the market in the US in a restricted form, relating now only to a precise disclosure directly or indirectly by the inventor.

In Europe, and similarly in the UK, it has long been established that absolute novelty is needed. As such, any prior disclosure in any form of the claimed invention can impact the validity of the subsequently filed patent application.

Europe and the UK do have some exceptions to this rule, and a six month grace period for filing a 1st patent application is supplied in the event of an evident abuse of confidential facts or the invention was displayed at an officially recognised exhibition.

Even so, as a general rule of thumb, it is better to keep your invention secret until such time as your patent application is filed.

Portion two of this series will explore Post-Grant Proceedings and Prior Use.