Documentation from all nations would be valid for consideration in disputes

The most sweeping changes to United States patent law in nearly 60 years are closer to reality after the Senate overwhelmingly passed a reform bill in early March.

The Judiciary Committee of the House of Representatives has since approved its own patent reform bill, which largely tracks the version adopted by the Senate.

Although the Congress has been debating different aspects of patent reform legislation for some time, there have been few significant changes in the law over the past six decades.

With a current backlog of more than 700,000 patent applications and the rapid rate of innovation in technology, many believe that an overhaul of the patent system is long overdue.

The proposed changes to the patent system, including procedures before the US Patent & Trademark Office (USPTO), will inevitably impact how Chinese companies operating in the US protect their interests.

First-to-file system

In one of the most significant changes, the US will shift from a first-to-invent to a first-to-file system - which would then conform to every other country - but there is a concern that the change could hurt small businesses and entrepreneurs who lack the resources needed to rush their patent applications.

Under the new system, so-called interference proceedings that are now used to determine which applicant was the first to invent will be replaced by derivation proceedings to determine if an inventor in an early application derived subject matter without authorization from a later-filing inventor.

If the patent has already been issued, the owner of a later-filed application may file a district court action to contest the ownership of an allegedly derived invention.

More prior art

Both versions of the patent reform bill also propose expanding the definition of what qualifies as prior art - a legal term covering anything published before the filing date of a patent that describes the same or a similar invention.

An invention is currently not patentable if it was in public use or on sale more than one year before the date of the patent application, or known or used by others prior to the date of the invention, but only if these events occurred in the US.

The new law provides that any such events prior to the filing date constitutes prior art regardless of where they occurred in the world.

The time allowed for third-party submissions of prior art will also be expanded from the current two months to as much as six months and allow prior art or inventor statements on the scope of any claim.

The goal is for the USPTO to consider more prior art to weed out problem applications and result in stronger issued patents.

With an expanded submission window, Chinese companies may take a more active role in ensuring that potentially weak applications filed by others in their technical fields receive a more thorough examination by the USPTO.

(Source: China Daily)