14 June 2005

Harmonization in the US?

Dennis Crouch of the Patently-O blog has just provided a redlined version of the proposed United States Patent Reform Act 2005, as it stands presently. The Promote the Progress blog is also a good source of developments.

Introduction of the Act will impact significantly on Australians seeking US patent protection. It may also be a move towards harmonization at least on some basic principles.

For now, some points proposed by the Act are of interest:

a) The right to file a patent application in the US will not be limited to the inventor. The right to file can, in terms of an assignment or other legal mechanism, be vested in a party other than the inventor. This is in line with both Europe and Australia.

b) The usual 12 month "grace period" after any publication of the invention in which to file the application will change. The relevant section will provide a 12 month grace period to any form of disclosure made only by the inventor or assignee/s of the inventor. This is in line with Australia. No such grace period exists in Europe.

c) At the moment, an invention is not patentable if it was used or known by others in the US prior to filing the patent application for the invention. According to the Act a claimed invention is not patentable if the invention was just "known". However, the subject matter is "known" when it becomes " reasonably and effectively accessible". This can happen through use or any other form of disclosure or when "it has been made inherently known from subject matter that has become reasonably and effectively accessible ". Knowledge will be "reasonably and effectively accessible" if the "subject matter can be accessed and comprehended, without resort to undue efforts, by persons of ordinary skill in the art to which the subject matter pertains. " In Australia and Europe, becoming "known" through non-confidential disclosure of any sort is sufficient to render an invention unpatentable.

d) The Act proposes that a claimed invention may not support a patent if the claimed invention was, inter alia, described "in an application for patent published under section 122(b)". This existed before. However, the Act proposes that such an application be defined as an application that provides a priority date for a US application. Thus, an Australian provisional patent application could block the allowance of a US patent application with a later filing date. This will obviate the benefit of filing a US provisional patent application. Both Australia and Europe have similar provisions.


The Act proposes a number of other important changes, which can be read on the above blogs.

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