It’s amazing how fast 18 months flies by. It seems like just yesterday I was lamenting the passing of the America Invents Act, and now here we are mere days away from its final implementation.
If you haven’t heard, the United States will officially follow the herd and become a First-Inventor-to-File nation on Saturday, March 16. In light of this new beginning, here are 5 things you should know about the AIA to ensure that your inventions are protected.
1. First-Inventor-to-File Wins
Here’s the scenario.
Two competing companies are working to solve the same problem. Both companies invent the same solution. Each company files a patent application with the US Patent Office. Who does the Patent Office award the patent to?
Under the First-to-Invent system, the patent would be awarded to the inventors who could show that they invented the invention first.
Under the First-to-File system, the patent would be awarded to the inventor who filed their application first.
To quote Tom Hanks’ character in Cast Away, “We live and die by the clock.” You don’t have time to make everything perfect before you file a patent application. Good enough will have to do. (You might even have to settle for just OK.)
2. You Will Spend More Money Earlier in the Process
Under the First-to-Invent rules, an inventor could tinker around with his invention, tweaking it until he turned his concept into a finished product. At that point, he could file one patent application to cover the end result without fear that someone would step in and file their application before he was ready.
Those days are gone.
You no longer have the luxury of waiting. An inventor will have to be on top of his patent game from the very beginning. The new corporate patent process might look something like this: file at conception, file again, maybe multiple times, as the inventor works the concept into something that resembles a more complete product, and at the end when the final product finally reveals itself.
That’s a lot of money earlier in the process to ensure that you have won the race to the patent office.
3. You Need a New Attitude
In order to make this adjustment successfully, your organization MUST adjust your thinking when it comes to patents. You can’t file a patent as an afterthought in your New Product Development process. You need a procedure to identify any and all patent issues as early in the process as possible. If you don’t, you run the risk of losing your valuable business assets.
4. The Strategic Use of Provisional Patent Applications
Make sure you and your patent attorney understand how to use provisional patent applications. When money is tight and time is of the essence, these informal, non-examined patent applications may just be the answer.
5. Amending Claims Can Change the Rules
It all seemed so simple.
Applications filed before March 16, 2013 will continue to be subject to the old First-to-Invent rules. Applications filed on or after March 16, 2013 will be governed under the new First-to-File rules.
But nothing is ever as simple as it seems under the AIA.
What if you amend or add claims in your first-to-invent patent application after the March 16, 2013 date?
Even though you had filed your patent application prior to March 16, 2013, certain changes you make to the claims may pull your application into the First-to-File rules, and you may not get the full protection of the First-to-Invent rules you thought you had.
6. Change to the Grace Period Rules
Like the First-to-Invent system itself, America had another somewhat unique feature in its patent system. The United States offers what is known as a Grace Period.
In the United States, inventors were given 12 months to file a patent application after the date the invention was first disclosed to the public no matter who disclosed the invention. That was a benefit of the first-to-invent system.
Now, the grace period only applies to disclosures made by the inventor. Public disclosure by anyone else anywhere in the world prior to you having a patent application on file means you lose your patent rights.
(Think about how this could impact heavily competitive industries with multiple companies working to solve the same problems.)
7. Prepare for the Unexpected
Just when you think you understand the AIA things are bound to change. Like any new law, what the various provisions and terms of the AIA really mean will be decided by the Courts. Over the next decade (or longer) IP practitioners will closely watch as cases wind their way through the Federal court system. There is already talk that a Constitutional challenge will be waged against the America Invents Act itself.
Don’t be fooled. The America Invents Act brings significant change to American business. In 10 days, we enter into a brave new world, America. Good luck and God speed.