5 Things to Do Before the New Patent Law Takes Full Effect

5/2/12

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the new act was to continue this one-year “grace period,” unfortunately the language in the act is not so clear. Thus, if there is any chance that you will file for a patent on an invention after March 16, 2013, and you want to use, sell, or disclose that invention before you file, then you would be wise to consult a knowledgeable patent lawyer before doing so.

—Watch out for departing employees and consultants.

Another murky area of the new act concerns safeguards against theft of your inventions. Under the old act, you could always show you invented first, and also rely on a fairly generous provision that protected against “derivation” in the case of theft of trade secrets. Under the new act, while there are safeguards against derivation, it’s unclear exactly how protective those provisions will be in practice. The act clearly protects against a thief who steals an invention and files for a patent on that same invention. But the act isn’t so clear about what happens when the thief modifies the original invention in some way. Since the winner of a patent will generally be the one who is first to file, not the first to invent, someone who steals your invention—then modifies it—may be able to get a patent nonetheless. Hopefully, the courts would not allow this, but until that time, inventors and companies should be careful to keep their secrets close to their chests—even when it comes to employees who are under non-disclosure agreements (NDAs). In that regard, for those on a need-to-know basis, very strong NDAs should be used.

—File “concept” applications now that can be used for priority purposes after the AIA fully takes effect.

Remember that if an application filed after March 16, 2013, can trace all of its claims back to an earlier application, it falls under first-to-invent. Even if you have not fully completed an invention, you may want to file a “conceptual” application based on … Next Page »

Ted Sichelman is an associate professor of law at the University of San Diego School of Law, where his work has focused on intellectual property, entrepreneurship, and other areas. He previously was a practicing attorney. He also founded a venture-backed software company. Follow @

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