The America Invents Act of 2011 is changing the way the US patent system works. Several of these changes are coming in September 2012. This post highlights one of these changes.
On September 16, 2012, assignees of inventions will be allowed to file U.S. patent applications. Under this new provision, after a U.S. patent application is filed on behalf of the inventor(s), an assignee of the entire right to the invention can request to exclude the inventor(s) from prosecution by proving ownership of the entire right to the invention. Proof of ownership can be an assignment from the inventor(s) or proof of an obligation on the part of the inventor to assign the invention (e.g., an employment agreement covering intellectual property rights).
Prior to this change, U.S. patent law only allowed the true inventor(s) to file patent applications, except in specific circumstances when one or more of the inventors was unwilling to sign an oath or declaration for a patent application; could not be located after diligent effort; or was deceased, legally incompetent or incapacitated. In these cases, the party seeking to file on behalf of the true inventor(s) was required to file a petition along with various signed statements and/or evidence. The new provision will remove the need for an assignee (or employer having a suitable employment agreement in place) to ask the inventor(s) to execute an oath or declaration for a patent application.