Patent Reform - The Most Important Thing To Know...

On March 16, 2013, the full effect of the America Invents Act becomes law.  Upon enactment on September 16, 2011, the only portion that went into effect immediately where the changes in fees, but that just seems standard when it comes to new legislation, that the money portions would not have to wait the 18 months the rest of the law would have to wait in order to become law.

The most important aspect of the new law is the change from a "first to invent" system to a "first to file" system, which is purportedly intended to bring US patent law into more conformity with foreign patent laws. There is some debate as to whether the new provisions actually accomplish this, but again, that can be said about most legislation versus legislative intent.

In an international context, it is often the case that absolute novelty is required before filing a patent application, i.e., there is no grace period of time within which one has to file the application after public disclosure.  In an absolute novelty jurisdiction, the application must be filed prior to public use or disclosure.  In the US, there is a personal grace period of 12 months prior to filing an application of public offer for sale, use or publication.  This has not been changed by the new law.  However, what has been changed is how prior art is determined relative to a filed application, which impacts this grace period specifically.

Prior to the change in the law, if an applicant could prove he or she was the first to invent something, regardless of whether or not a patent application has been filed on the invention, any filings subsequent to the date of the documented invention could not be used as prior art against that applicant.  This is where the major change in the law occurs.  Under the new law if an inventor does not file an application on  his or her invention right away, but a competitor does, the competitor receives priority regardless of the fact that the first inventor may have provably invented the idea first, since he or she did not file first.  An exception is made in the case that it can be proven that the second filer stole the idea directly from the first one.

As a practical matter, this puts the independent inventor or start-up small business at a slight disadvantage toward the larger fish as they typically don't have the funds to file a patent application on every idea as it comes to them.  In the past, the 12 month grace period has proven to be a very valuable asset to independent inventors and small businesses to test the relevant markets, raise money and determine whether or not a patent is likely or cost effective.  The net result for my clients (primarily independent inventors and small corporations) is the necessity now to file provisional patent applications early and often.  These are relatively inexpensive compared to a non-provisional patent application and can establish priority at a key time.

The cost for filing a provisional patent application with my office is on the order of $400 provided the client provides me with a detailed understanding of the invention.  A non-provisional application will still need to be filed (typical cost $4000) within a year of the filing the provisional in order to get patent protection, but at least priority will be established lest an independent third party come up with the same idea during that grace period.  While the grace period still exists, it is now dangerous to rely on it completely lest the idea occur to someone else.  It has been my experience and the experience of patent attorneys and inventors throughout time that ideas appear "in the ether" at any given time and there are many "conduits" to these ideas.  Because of this, filing with the patent office sooner than later makes all the difference, especially after March 16, 2013.