PATENT is a territorial right. Trade Related Intellectual Property Rights Agreement allows all member states to form their own patent laws in recognition of their cultural, socioeconomic, demographic, geographical and political differences. An inventor has to seek individual patent protection for her/his invention in every country.

On September 16, United States Patent Law was reformed by Leahy-Smith America Invents Act 2011. In an effort to achieve global patent harmonisation, the US joined hands with its other two members of the trilateral partners that are European Patent Office (EPO) and Japan Patent Office (JPO).

Grant of inventor’s reward: The US has fundamentally reformed its patent system by switching from First-to-Invent (FTI) to First-Inventor-to-File (FTTI)standard. This change will come into effect within 18 months which is the effective filing date. Earlier, the patent rights were granted to the inventor who first completed the invention as also in the case of EU and Japan.

Conversely, the patent rights will be granted to the inventor who is the first to file the patent application now under the new law that has replaced the older S. 23 from the US Patent Act, 1952. Invention with the first effective filing date shall be considered for patent grant.

Grace period: A grace period is the time period (usually of one year) which is considered as a limitation to the prior art. Any disclosure of the invention by the inventor within the grace period allowed by a country’s patent law does not make that invention a part of prior art. Thus, it allows the inventor safety in terms of its invention to remain eligible for the grant of patent even when it was disclosed prior to its filing in the respective patent office.

Grace period pre-patent filing: According to the old law, the inventor was given a grace period of one year before the end of which the inventor had to file the patent application. In this time period, any disclosure by the inventor, co-inventors or third parties did not tantamount to the inventor losing the patent rights. This grace period has been removed by the new law.

Grace period for disclosure: Under the new law, the inventor will be allowed to have a grace period of disclosure. Accordingly, if the invention has been disclosed less than a year before the filing of the patent application by 1) the inventor or 2) any person who is directly or indirectly linked with the invention shall not be considered a part of the prior art and the inventor will continue to be eligible for the patent grant.

However, the invention has been disclosed by a third party not linked with the invention in any way, it will tantamount to the failure of the inventor to remain eligible for the grant of patent.

Priority date: Thus, an inventor who has published his invention shall have an absolute right of priority to file the application within one year grace period.

Derivative proceedings: Under the First-to-Invent standard of assessing the true inventor of the invention, an administrative proceeding was provided. Whenever, two inventors claiming the same subject matter were involved, the interference proceedings allowed them to provide corresponding evidences to conclude who is the true inventor. The First-Inventor-to-File standard has replaced interference with derivative proceeding.

Accordingly, when a claimed invention is found to be derived from other’s, a derivative proceeding will be undertaken to assess whether it has actually been derived or not. In case, the invention with the first filing date is found to be derived from the invention with later filing date; the latter applicant will be given the patent rights if it has also satisfied other patentability criterion.

This provision empowers the inventors with a safety measure to the original inventor. For instance, the first applicant filing the patent application has derived the idea of the invention from the latter applicant and is claiming patent rights for it. The latter applicant can request for derivative proceedings to establish the case.

Post-patent grant: Under the new law, the third parties have a period of nine months to undertake a court action or appearance before the USPTO for patent review.

Prior art redefined: The new law has redefined the prior art definition. Under the S. 102(a) the scope of what is considered as prior art has been extended to include any publication, sales, public use, and all other disclosures falling under the public domain as of the effective filing date within one year.

In other words, any disclosure of the invention before one year of the effective filing date of the patent application taking place any where around the world is considered as prior art and will be considered as bar to the grant of patent rights for that invention.

However, the prior art shall not include any disclosure within one year or invention “otherwise available to the public.” Under the new provision, prior art includes inventions “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public”.

Fees: All of these changes will be effective from 18 months of the enactment of the Leahy-Smith America Invent Act. However, the 15 per cent increase in all fees related to patent application filing, patent search, patent examination fees, patent maintenance, patent post-allowance fees, post issuance fees, miscellaneous fees, patent time extension fees, and any other fees are effective from September 26, 2011.

Prioritised examination: A new service by USPTO has been introduced. An inventor can now request for patent examination on prioritized basis with a payment of $4,800.

The writer is an Intellectual Property lawyer.