Be Prepared! Major Changes to U.S. Patent Law Coming into Effect on March 16, 2013


Read ROBIC’s Special Report

U.S. patent law has been undergoing a historic transition since President Barack Obama signed the America Invents Act (AIA) on September 16, 2011.

Over the past 18 months, various provisions of the new law have come into effect, such as a 15% increase in USPTO (United States Patent and Trademark Office) fees, a wider range of options for intervening with the Examiner in charge of examining a competitor’s patent application, and the implementation of a new acceleration procedure for examination. However, the most significant change to be brought about by the AIA will occur this March 16, when U.S. patent law will switch from a “first to invent” to a “first to file” system.

The patent professionals at ROBIC have prepared a special report, summarizing the potential impact of this transition on Canadian applicants wishing to obtain patent protection for their inventions in the U.S. Apart from the new “first to file” system, our report examines the new mechanisms put in place by the AIA to challenge the validity of an issued U.S. patent. Finally, we analyze the new USPTO fee schedule which will take effect on March 19, and explain the impact of its changes on your patent portfolio.

The details of the changes brought about by the AIA are complex, and it will take several years before the consequences of this reform are fully understood. However, there does seem to be a consensus among most patent professionals that it is probably beneficial for most patent applicants to take advantage of the current “first to invent” system, if possible. We therefore invite you to contact our patent agents to discuss the protection of any inventions for which you have not yet initiated patent procedures in the U.S. The clock is ticking; it may indeed be in your best interest to speed up the preparation and filing of new patent applications before the March 16, 2013 deadline.