At last a new US patent statute, to be called the Leahy-Smith America Invents Act, has been approved by both Houses of Congress and submitted to President Obama for signature.
The Act will amend title 35 of the United States Code, to provide for patent reform. Probably the most significant amendment is the move to a first-to-file system, rather than the first-to-invent system that the US currently has. Others, more qualified than IP Draughts, will no doubt comment on the implications of the Act for patent prosecution and litigation.
IP Draughts has been browsing the final text, and notes that there are several provisions that could, potentially, affect the terms that should be included in IP agreements, including sections dealing with novelty and inventions made under joint research programmes (section 102(c)), and provisions as to virtual patent marking using an internet address (section 287(a)). For example, in future would it be useful to state in collaborative research agreements that the agreement is to be treated as a joint research agreement for the purposes of section 102(c)? Or is this unnecessary verbiage? IP Draughts would welcome the views of experienced US IP lawyers on this point.
The amendment that seems to be most directly relevant to transactional lawyers is that made to section 118, which provides:”A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.” This appears to change the current, inconvenient system in which the inventor(s) must make the initial application, unlike the position in the UK where an employer or assignee often does so. This may reduce the need to get inventors’ signatures on patent applications, and encourage the use of patent assignments at an early stage, so that employers can make the applications.
IP Draughts freely admits that he is not an expert in US patent law, and hopes that readers may put him right if he is mistaken about the key implications of the Act for IP transactions.
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