Canadian Lawyer InHouse

By Patricia Folkins AIA, eh? A Canadian perspective on the reworking of U.S. patent law. Invents Act, or "AIA", was signed into force by President Obama representing the first comprehensive overhaul to U.S. patent law in 60 years. So, do these changes have any significance to Canadian patent appli- cants? Since most Canadian companies see the U.S. market as their biggest and most desirable, it is imperative that we all pay close attention to the changes that the AIA set in motion and that will continue to develop over the 18-month period fol- lowing enactment. Many comprehensive reviews of the U AIA have been published since its enact- ment. A detailed review is beyond the scope of this column. The purpose of this article is to highlight a few of the changes that should be of interest to Canadians. Perhaps the most talked about change enacted by the AIA is the switch from a "first to invent" to a "first inventor to file" patent system. Since Canada has operated under a first to file system since 1989, the principle behind this new system will not be new to Canadian applicants. However, there are some subtle, but significant, differences between the two systems. For example, the U.S., like Canada, will retain a one-year grace period during which a patent application may be filed, by the inventor, after a disclosure made directly or indirectly by the inventor. Unlike Can- adian law, however, the AIA introduces a new effect of such a disclosure by the inventor — if an inventor directly or indirectly discloses their invention and then subsequently files an application within the ensuing 12-month grace per- nless you began your winter hibernation early, you will have heard that, on Sept. 16, 2011, the Leahy-Smith America iod, then any independent disclosure of the subject matter of that invention (i.e., by a third party) during the period between the publication and filing will not count as prior art. The first-inventor-to-file provisions will not take effect until March 16, 2013. Overall, these provisions completely re- write the novelty sections of the U.S. Pat- ent Act and will result in more prior art being available for citation against a U.S. patent application (in fact more than can be cited against a correspond- ing Canadian application). Therefore, you enforcement for years to come. Many pro- visions are not yet in effect, however sev- eral guidance documents and proposed rule change documents have recently been released from the U.S. Patent Office. Of note are the recently released, proposed patent-fee increases that, under the fee- setting authority provided to it by the AIA, the patent office would like to imple- ment. Many of these proposed fees repre- sent significant increases over the current rates. For example, the patent office has proposed to more than triple the utility examination fee and almost double the fee for requesting continued examination. Maintenance fees for patents are targeted for about a 40-per-cent, 25-per-cent, and 60-per-cent increase for the 3.5-year, 7.5- year, and 11.5-year fee, respectively. The patent office is accepting written com- ments on all proposed rule changes and Perhaps the most talked about change enacted by the AIA is the switch from a "first to invent" to a "first inventor to file" patent system. will find many U.S. practitioners recom- mending that applicants try to get their applications filed prior to March 16, 2013. Keep in mind that U.S. or PCT appli- cations based on a provisional applica- tion filed after March 16, 2012, that con- tains claims to subject matter added after March 16, 2013, will be subject to the new first-inventor-to-file provisions. Other significant changes include sub- stantial alternations to the options for third parties to challenge the allowance and issuance of patents. For example, the new law makes it possible for third parties to submit prior art in a third party's pat- ent application in a much more effective manner. Also, a new post-grant review procedure, similar to the EP opposition procedure, will be put into place, effective Sept. 16, 2012. The changes enacted by the AIA will impact U.S. patent prosecution and all interested parties are strongly urged to review the proposals and provide their feedback and suggestions prior to the pub- lished due dates. As international applicants that desire strong patent protection in the U.S., it is imperative that we pay close attention to how the law is interpreted, implemented, and litigated. For more information about the AIA, its implementation, and how to provide feedback, readers are directed to the U.S. Patent Office web site at: http:// www.uspto.gov/aia_implementation/ index.jsp. For a more in-depth review, please read "Major Reform of U.S. Patent Law: The Leahy-Smith America Invents Act" (www.bereskinparr.com/Issue/id27). IH Patricia Folkins is a partner with Bereskin & Parr LLP in Toronto. She is the leader of the firm's chemical practice group. INHOUSE APRIL 2012 • 11

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