How the New Patent Rules Under the America Invents Act Affect the Chemical Industry

By: Richard Gearhart

First to file” replaces “first to invent.”  If two inventors invent the same technology, the one who files the patent on it first gets the intellectual property protection, regardless of who invented it first.  This aligns the US patent system with the other countries of the world. For example, if inventor A invents a new catalyst in 2012 and inventor B invents the same catalyst in 2013, inventor B will get the patent if he files his patent application first. Before the America Invents Act, even if inventor B filed first, inventor A could take action with the patent office to have the patent awarded to him since he invented the catalyst first. So it will be more important to file patents quickly if your company does not already take global patent rules into account when making filing decisions.

Notice of patent protection. It is no longer a violation to mark a product with an expired patent, as long as that patent once covered the product.  For example, if a company markets a consumer chemical formulation with the patent number on the packaging, the company doesn’t have to revise its packaging once the patent expires, as it did in the past.

Best mode. While an inventor is still required to set forth the best mode in his patent application for the invention, failure to disclose a best mode is no longer a basis for invalidating or rendering unenforceable an issued patent. While the law formally retains the best mode requirement, by making insufficient disclosure no longer an allowable defense against patent infringement, the law renders best mode unenforceable.  This aligns the US more with Europe, which doesn’t have the ‘best mode’ requirement.  For instance, if multiple chemical formulations are similar in composition but one demonstrates the highest efficacy, then that formulation is the ‘best mode’ of the invention, and the inventor is required to disclose it.  In the past, the patent could be invalidated in the United States if the best mode wasn’t disclosed.  Now, there is no recourse if the inventor leaves the best mode out of the application, so if a company wants to keep their best formulation a secret and not publish it, it won’t affect the patentability of their product.

Confidential Sale.  America Invents Act provides that confidential sales of products containing the patented technology will no longer mark the beginning of the 1 year period to file the patent

Prior user rights defense. If an individual/entity begins using an invention (‘user’) more than a year before a subsequent inventor files for a patent on the same invention, then the user will have the right to continue using the invention in the same way after the subsequent inventor is granted a patent as long as the user did not derive the invention from the subsequent inventor. These prior user rights are limited in scope and transferability, and they also have limited applicability to patents held by universities.  This issue comes up in the chemical industry where a manufacturing process is kept as a trade secret.  In the past, if a competitor independently discovered and patented the trade secret then the competitor could enforce the patent against the trade secret holder.  This is no longer the case, as if the process has been used more than a year then the trade secret holder has prior user rights and the patent cannot be enforced against them.

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