UK businesses may fall foul of changes to USA’s patent system
By Daniel Hunter
The US patent law is to change on 16th March to bring the system more in line with Europe, but many UK businesses still unaware of how it affects them could unwittingly jeopardise their chances of getting a US patent, say experts.
The USA moves from a “first to invent” system which grants patent rights to the first person to make an invention, rather than to the first person to file a patent application as with the European system.
The US’s system was intended to help smaller inventors who might be slow or struggle to file a patent application and enabled some development without the secrecy required by the European system.
Ilya Kazi, Partner, Mathys & Squire said: “The USA is one of, if not, the most important technology and intellectual property markets in the world, and the vast majority of UK companies who seek protection abroad opt to protect their technology in the US.
“This change in the US law is welcome as the old system led to very costly disputes over when an invention was made which smaller businesses simply could not afford to fight and greater certainty will benefit all.”
“However, some details of the change mean that businesses who engage in confidential discussions with potential customers and suppliers under non-disclosure agreements prior to filing a patent application may now seriously endanger their chances of getting a US patent.
“Many UK businesses will have been advised of the change, and may well have rushed to get certain patent applications on file before the law change comes into force in order to take advantage of the more favourable aspects of the old system. However there are still a great number who are not fully aware of the details and could find in a few years that they have inadvertently compromised their chance to obtain protection in the US.”
Another aspect of the changes concerning experts is the ‘grace period’ during the transition which could still see someone who publishes their invention ahead of filing a patent - which in the European system would seriously compromise the application - in a better position in the US than someone who files a patent promptly.
Ilya Kazi added: “The cost of seeking patent protection, particularly on a large scale internationally, is by no means trivial for small businesses and unexpected pitfalls still remain but, with appropriate strategic advice, protecting intellectual property is in general becoming more manageable for businesses."