Thoughts from the USA

I recently had the pleasure of attending the AIPLA annual meeting in Washington DC. The main focus of the sessions was, as expected, around the impact of the changes to U.S. patent law brought about by the America Invents Act (AIA). There were also a number of sessions dealing with the practicalities of Chinese patent law. This is an interesting, but not unexpected development as U.S. companies seek to engage with the Chinese IP system more seriously. It also indicates the evolution of the Chinese patent system and the importance of the Chinese market to U.S. businesses.

Some other thoughts from the AIPLA meeting include:
• U.S. attorneys expect to be making much more use of provisional applications as establishing a first-to-file priority disclosure becomes more important.
• A possible increase in requests for Supplemental Examination (basically a re-examination requested by the patentee based on new newly uncovered prior art), including using the process to cure possible instances of ‘inequitable conduct’ where the full range of relevant prior art may not have been notified to the Examiner. However, it is an expensive process to engage in – official fees of USD 21,260 with no small entity discount – meaning it is likely to only be used where a substantial litigation is expected.
• ‘Functional’ patent claims are still valid under the AIA, provided there is sufficient disclosure of the structure to meet the function.
• Most U.S. attorneys I spoke to said their clients are adjusting well to the AIA, and to the first-to-file system. In most cases, U.S. patent applicants who were interested in overseas patent protection were operating to the system in any case.

I am also pleased to report that the mood around the U.S. economy is much more positive than I had encountered in the last 2 to3 years. Many attorneys saw a big spike in new applications in April prior to the AIA being implemented, much as we had seen in Australia preceding the Raising the Bar Act. However, the expected slump afterwards has not eventuated, meaning the rate of filing new applications has taken a consistent step upwards.

I enjoyed catching up with U.S. associates in Minnesota and Colorado. Both of these states’ history is not unlike that of Australia, with their economies being originally built on mining and agriculture. But now as water resources become a significant issue, both regions are looking to technology developers to be the mainstay of future economies. It turns out that both value-added agrifood processing and medical device design & manufacture have found favour in these regions, which fits well with Franke Hyland’s focus and capabilities.

by Adam Hyland

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