Boost for inventors as changes in patent law bring US into line with rest of world
New rules brings US into line with the rest of the world for first time since Abraham Lincoln was president
US president Barack Obama addresses a crowd of students, teachers, business leaders and members of Congress before signing the America Invents Act at Thomas Jefferson High School for Science and Technology on September 16th, 2011, in Alexandria, Virginia. Photograph: Chip Somodevilla/Getty
Across the globe the first inventor to file a patent – rather than the first to invent – is the one who takes the spoils, regardless of who might have done what before them. This system, while potentially unjust in some situations, is efficient and has served most of the world very well for decades.
Except for our friends across the pond, that is. Enshrined in US Constitution Article 1, Section 8, is the guarantee that “The Congress shall have Power . . . to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
The Leahy-Smith America Invents Act (AIA), which was signed into law in September 2011, begins to take effect only this year. This act shifts the protective emphasis from the inventor to whoever files the patent first.
“From a US perspective it’s a huge change because it alters the whole premise on which patent rights were granted from a ‘first to invent’ system to a ‘first to file’,” explains Alistair Payne, partner and head of the Intellectual Property group at Matheson.
“Now it’s possible to treat the US like any other country. This will makes things significantly easier for people. The old practice of filing simultaneously is no longer as crucial as it was. However, the practical reality is that many US investors will still like to see a US patent application. But the new system allows people to take advantage of international filing.”
Why it has taken so long for the Americans to fall into line with the rest of the world is not totally clear. But a combination of misguided nationalism, a perceived philosophical position and sheer sluggishness have not helped.
“Americans have always attempted to frame their patent law as advantageous for US companies, but patent law is blind to nationality,” explains Conor Boyce, patent attorney at Hanna Moore & Curley.
“The nationalism that might have driven developments in US patent law in the past has been realised as a faint hope on their part. Now they’re concentrating on modernising their patent system and making it more efficient for everybody. Everybody benefits.”
Old habits die hard and this has not helped the situation either. “The American system has been used to this notion of ‘first to invent’ for some time,” explains Naoise Gaffney, European patent attorney and US patent agent for Tomkins.
“So any individual or company’s commercialisation strategy didn’t need to put patent filing at the top of the priority list. As long as you kept basic notebooks documenting your research, you could in theory turn around and show proof that you invented something first.
“In practice, however, taking a case like this was beyond the reach of most people. It is an extremely specialised area of patent law. Patent lawyers are a rare breed and they’re not cheap. So in essence it was more of a philosophical position than anything else.”