By Ruthan Brodsky
Oct. 27, 2011
Since President Barack Obama signed into law the Leahy-Smith America Invents Act on Sept. 16, 2011, the jury is out on the impact of the changes. The differences of opinion are wide, according to a review of patent experts.
| President Obama signs the Leahy-Smith America Invents Act. |
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Many in the patent field are convinced the impact of change won't be clear for many years. Much will depend upon how the details are implemented and interpreted in the courts. There is also some discussion whether the new provisions will increase the number of jobs as intended by increasing the number of approved patents.
David Wisz, chair of the Intellectual Property Law Section of the State Bar of Michigan and patent attorney at Carlson Gaskey and Olds, in Birmingham, Mich., comments that references to increased jobs are merely "political puffery” and the new law is unlikely to increase the number of employment opportunities. Here’s a look at provisions of the new patent law.
First to File System (FTF)
In its attempt to make the U.S. patent system more efficient, the U.S. moves to a first-to-file system from a first-to-invent system. This brings the U.S. patent process in line with most other industrialized nations including Canada.
| Patent attorney, Michael Stewart. |
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"Under this system the first person to file the patent rather than the first to invent something, gets to own the patent." says Michael Stewart, patent attorney and a founding member of Rader, Fishman & Grauer, PLLC, in Bloomfield Hills, Mich. "This shifts the patenting strategy to filing sooner rather than later to make sure patent rights aren't lost. This provision doesn't go into effect until early 2013 providing time for adjustments."
"This provision tends to benefit large companies because they have more resources, which makes it less of a problem to be first than individuals and small companies " continues Stewart. "There's also a wrinkle to this provision because an individual or company may publish their invention, which then gives them a year to file their patent application."
According to Stewart, the danger with publically disclosing an invention is lack of protection from patent infringement in other countries. The intent, however, is to encourage inventors to let others know about a new system or technology so that other products that work with this new technology can be developed."
Patent Litigation and Post Grant Review
The law now provides a new post patent review system at the U.S. Patent and Trademark Office (USPTO) that enables anyone, including patent litigation defendants, to challenge the patent. The proceeding is supposed to be a more cost effective way to handle patent disputes.