It's a brave new patent world out there now.
The most sweeping changes to our patent system since the Patent Act of 1954 were ushered in on March 16 with enactment of the America Invents Act. The AIA brings a long-awaited harmonization of U.S. patent law with the rest of the world's.
One change likely to have the biggest impact on corporate intellectual property strategy and practices is that the United States has switched from a "first to invent" system to a "first inventor to file" system. This means it's now a race to the patent office, where the first to file will be given the patent even though that person may have conceived the invention after a later filer. Under the previous law, the first inventor to conceive the invention was given the patent, even if that person filed for the patent later.
What this means for companies and inventors and is that they can no longer afford to delay filing until product designs are fully tested and manufacturing methods perfected. Gone are the days when an inventor can sit on an invention, wait until it is perfected or commercially viable and file a patent application at leisure, knowing that as long as he or she can prove an earlier conception date, the patent will be awarded. Now, delaying patent application filings for inventions can be deadly; the system rewards applicants who file quickly.
To block others who come up with the same invention independently, an inventor now will want to consider filing a patent application at earlier stages of development. Inventors should consider filing provisional patent applications, which will lock in a filing date for the subject matter described.
The number of provisional patent applications is likely to increase as inventors attempt to lock in earlier filing dates. Companies will be under pressure to file as soon as an invention is ready for patenting. Patent-savvy firms will want to streamline their internal processes to minimize the time between when an idea is conceived, submitted to the patent committee and possibly developed further and when a filing decision is made.
It is still important, however, to maintain laboratory notebooks to challenge another filer in what is known as a derivation proceeding at the patent office. In that instance, the later filer argues that the earlier filer derived the invention from the later and is not the true inventor. A disgruntled employee or dishonest colleague may file for a patent on your invention, and you will have to argue that the rival derived the invention from you.
Another sweeping change to the patent law is the definition of prior art, the documents and references a patent examiner can cite against your application. Under the America Invents Act, there is now no distinction between foreign and domestic prior art, meaning that any activities anywhere in the world that are in public use, on sale or otherwise available to the public are now considered prior art. In addition, published U.S. patent applications as well as issued U.S. patents are now considered prior art as of their earliest filing date, regardless of whether the earliest filing date is of a U.S. or foreign document.
The grace period under the old law, when an inventor could disclose and commercialize an invention for a period of one year and still obtain patent protection, has been redefined. The new grace period is a limited exception to the general rule for what is considered prior art. It is, however, relatively narrow, and relying on it is not recommended.
Under the new AIA law, certain disclosures made within a year of filing an application may not qualify as prior art and thus cannot be cited against an applicant during the examination of the patent application. One type of disclosure that is not prior art is a disclosure that was derived from and can be traced to the inventor.
So publications of new inventions made by the inventor within a year of filing are not prior art. This exception does not include sales or public use of the invention. Another type of disclosure that falls under the exception is one made by someone other than the inventor that occurs after an earlier "shielding" disclosure of the invention that is traceable to the inventor.
The publication of the invention can be used offensively and defensively. Consider a first inventor who publishes his invention. Before the first inventor files for a patent, a second inventor files on the same invention. The first inventor then files after the second inventor. In this case, the patent office will award the patent to the first inventor even though he filed later. The publication of the invention by the first inventor acts as a bar for the second inventor. It is not damaging prior art to the first inventor as long as he filed within the one-year grace period.
Inventors should consider publishing their inventions as a defensive strategy if they deem their ideas not worth patenting. This way the publication can block a competitor from filing an application for the same technology. It acts as prior art for all applications filed by others, as long as the publication predates the filing of the other applications, thereby preventing competitors from obtaining patents on the published technology.
There are many practical consequences to enactment of the America Invents Act, the major one being the shift from first-to-invent to first-inventor-to-file rules. It is essentially irrelevant now which inventor was first to invent. Other consequences are likely increases in provisional application filings and pre-emptive early disclosure of inventions.
The pool of prior art that can be cited against an applicant has been widened considerably. Also, the fees the patent office charges have recently increased significantly. These factors combined with new mechanisms to challenge a patent application, including third-party submission of prior art, post-grant review and inter-partes re-examination (between the parties), make it much tougher now to obtain a patent.
The value of those patents that make it out of the office, however, is likely to increase, given the tougher examination process and broader array of tools available to challenge a patent application.
Howard Zaretsky is a partner in the intellectual property department of Woods Oviatt Gilman LLP. He can be reached at firstname.lastname@example.org
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