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

5/2/12

On September 16, 2011, President Obama signed into law the America Invents Act, the most important modification to U.S. patent law in 60 years—and some even argue, since 1836. Some changes went into effect immediately, such as fee penalties for submitting paper applications and strict rules on when multiple defendants can be joined together in one lawsuit.

These immediate changes were not as important to most inventors and tech companies. Instead, the big focus has been on the switch from the “first-to-invent” guideline for awarding patents to a “first-to-file.” Another change of great interest are the new types of challenges that can be used by third parties to prevent a patent from issuing, or to get it revoked. The changes in patent challenges take effect on September 16, while the new first-to-file rule begins next year, on March 16.

This doesn’t mean inventors and tech companies should be in standby mode, however. Actions that inventors and companies take now could affect patent applications and patents filed for and issued after the new provisions take effect. Thus, it is imperative for inventors and tech companies to start preparing immediately for the new world under the America Invents Act.

As a patent litigator, inventor, and professor of patent law, here are my five most important steps you or your company can take in advance of the First-to-File switchover:

—Get your documentation and lawyers ready to file patent applications on all of your current inventions by March 16, 2013.

All applications filed after March 16, 2013, that cannot trace all claims that were submitted at any time in the application to an earlier application fall under the new first-to-file rules—which in the vast majority of situations, can only hurt the applicant. Thus, under nearly all circumstances, make sure to file before March 16, 2013.

—Be careful about disclosing, selling, or using your invention in a commercial manner.

Under existing law, patent applicants have a year to file after selling, using, or disclosing their inventions. While it appears that the intent of 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 what you have completed as of early 2013. There are a couple of reasons: One, this application may be sufficient to support some claims that prove valuable down the road; and two, under a truly bizarre portion of the AIA, such an app may entitle you (depending on what the courts do) to use pre-AIA interferences against others that claim the same or similar inventions. In general, when speaking with your patent attorney, do not forget to discuss filing on those inventions not quite completed yet.

—Get ready to file early and often.

Once the AIA takes full effect, particularly the first-to-file provisions, generally speaking, speed to Patent Office will paramount. This is not only to prevent others from patenting what you’ve invented, but to overcome potential prior art, like articles that are published and sales and uses of the invention by others in the marketplace. Thus, winning the patent game will depend on filing patent applications earlier and more often than today. Also, the PTO is likely to increase filing fees even further. So it’s important to start budgeting now for what most will find a more costly world.

While these are the five most important things to do now, there are many other actions inventors and tech companies can take to prepare for the new act. I would not rely solely on your patent lawyer to let you know about the AIA, as the pitfalls and loopholes are many, and only those studying the act very carefully will know about them.

So educate yourself. For other action items, take one of the many courses being offered on the AIA (e.g., the Practising Law Institute’s’s course, Prior Art, Obviousness, and the America Invents Act in 2012).

As perhaps usual in this field, what was meant to streamline filing, lower costs, and create tech jobs, may ultimately make filing more complex, raise costs, and create jobs only for patent lawyers. But preparing wisely will make the landing much softer.

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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