(1) First-Inventor-to-File
US patent law was radically amended on March 16, 2013 regarding who is entitled to a patent. It is now the inventor who filed first (first-inventor-to-file), rather than the first inventor in absolute terms.
The new law retains the provision that the inventor must be the true and genuine inventor. The penalty for failing to meet this requirement is severe: the patent is rendered unenforceable, and therefore has no effect. Consequently, care must be taken to identify the persons who actually contributed to the conception of the invention, and not merely to its reduction to practice.
(2) Grace Period
The new law retains the 12-month grace period that excludes from citable prior art the inventor's own disclosure as well as third-party disclosures. Consequently, if you have inadvertently disclosed your invention before filing a patent application, it is still possible to obtain protection in the United States.
(3) Inequitable Conduct
The applicant is required to act with candor and good faith (duty of candor and good faith) in dealings with the US Patent and Trademark Office (USPTO). The applicant is also required to disclose to the USPTO all documents in their possession that are relevant to judging the patentability of the invention (material to patentability). This is known as the duty of disclosure.
Failure to meet this duty of disclosure, combined with an intent to deliberately deceive the USPTO, also leads to a severe penalty: the patent is rendered unenforceable, and therefore has no effect. Consequently, care must be taken to gather all relevant documents when filing a US patent application and to submit them in the form of an IDS (Information Disclosure Statement).
(4) Treble Damages
A distinctive feature of the US judicial system is the ability to award damages exceeding the actual harm suffered. In particular, willfully infringing a US patent may lead the court to triple the damages (Treble Damages). Consequently, if you are aware of a relevant US patent, it is strongly recommended to obtain a Freedom-to-Operate opinion from a US attorney before commercializing in the United States.
(5) Non-Obviousness (Inventive Step)
The assessment of non-obviousness (or inventive step) was profoundly changed in 2007 following a US Supreme Court decision (KSR). Since then, the US examiner may combine multiple prior art documents, potentially from fields far removed from the invention, without having to justify any specific motivation to combine. This assessment of inventive step is very different from the European system, so it is quite common to obtain a US patent with claims that differ substantially from those of the European patent.
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