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.

Obviousness...the big bugaboo

Okay, so in my last post, I went over novelty with regard to patenting a new idea. I teased at the end about the third prong of statutory patentability, which is that the idea has to be unobviousness to a person of ordinary skill in the art.

This is where the area of patent prosecution gets very nebulous. The definition of obvious for purposes of the patent laws is far from clear. As almost always comes to mind when I talk about this with clients is that everything is obvious in retrospect. Imagine the first person to put an eraser on top of a pencil. Before that, it was not obvious, but boy does it seem obvious now.

A recent Supreme Court case (KSR International v. Teleflex) took up the issue in 2007. As is common in patent law, a review by the Court did not clarify things....it only made them more hazy.

Basically, an obviousness rejection will be forthcoming on pretty much any mechanical patent since KSR if all of the known parts can be found somewhere in the prior art. I have labeled this practice "Frankensteining" as the Examiner finds each element present in the claimed invention in more than one reference, combines them all together, arguing that a person of ordinary skill in the art would have found it obvious to combine these elements this way. This is particularly difficult to overcome of all of the elements act as predicted and there is no unexpected result.

In the past, it was possible to argue that elements found in non-analogous art would not be known to a person of ordinary skill in the art, but this argument no longer works. Also, if there was no motivation found in the prior art to combine the elements, this would argue against obviousness. However, now it is more likely the case that it is up to the applicant to show that the prior art did more than not provide a motivation to combine. Rather, if it can be shown that the prior taught away from the combination, then the obviousness rejection can be overcome.

Since KSR, there has been more confusing language that attempts to define obviousness, such as

• A “combination of familiar elements according to known methods” that “does no more than yield predictable results,” or where such elements in combination do “ no more than they would in separate sequential operation.”

• The invention “simply arranges old elements with each performing the same function as it had been known to perform, and yields no more than one would expect from such an arrangement.”

• The invention involves “the mere application of a known technique to a piece of prior art ready for improvement” (the Supreme Court offered no elaboration to what it meant by “ready for improvement”).

• Whether a particular combination was “obvious to try.”

• A designer of ordinary skill “facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading” the prior art in the manner claimed.

• The invention is suggested in view of “demands known to the design community or present in the market place.”

• When a work is available in one field of endeavor, “design incentives and other market forces can prompt variations of it, either in the same field or in a different one.”

• A “design need or market pressure to solve a problem” for which there are “ a finite number of identified predictable solutions,” may suggest to a person of ordinary skill “to pursue the known options within his or her technical grasp.”

In the area of chemistry, it is still pretty easy to overcome an obviousness rejection if there is an unexpected result, which is often the case with chemistry (chemistry is my technical background, yet I only rarely get the fun of prosecuting a chemical invention). However, with mechanical inventions, this unexpected result is harder to come by as most mechanical components follow the laws of physics in the macro world, which rarely have any unexpected results. If you built a boat that unexpectedly flew, you'd be on to something, but mechanical inventions don't operate that way (unless you're working at the quantum level, i.e., chemical compounds and processes).

So, after a novelty search is conducted and it appears as though the exact invention is not out there, there is still the issue of obviousness, which is by no means a clear determination.

Ultimately, you may just have to take your chances with the Examiner and file and see what happens....

I have this great idea....

That is usually where it starts when I see a new client. My work as a patent and trademark attorney is, relatively speaking, a fun endeavor compared to other areas of the law. When my clients come to me, it is not because they want a divorce, they just got arrested or served with a summons. My clients come to me because they have an idea for a new invention or product and they are ready to set out on their entrepreneurial adventures.

The first thing you need to know about patents is why they exist. There is Constitutional authority for the Patent statutes under the responsibilities of the government to pursue the "useful arts." The Patent statutes give a limited monopoly on a new idea as long as it meets the statutory criteria. The criteria seem simple at first. The idea has to be 1) new, 2) useful and 3) unobvious to a person of ordinary skill in the art.

I have yet to run across an idea that was not statutorily useful so that second criteria is pretty superfluous.

To determine whether or not something is new, a novelty search of some sort needs to be conducted. This can be done in several ways. It can be done through a very thorough investigation of the art area through market research or it can be done through a novelty search, which my office does for a flat fee of $1000.

Most independent inventor clients do not engage in too much R&D. Usually, they are hit with inspiration, much like an artist. They are conduits to ideas out there in the ether. I have seen this over and over again. It never ceases to amaze me when how the time is ripe for an idea, it shows up in the minds of more than one person at a time. How many of you reading this have had a product in mind that you saw come on the market after you had thought there was a need for such a thing? This phenomenon is more common than most people realize.

Because of this "ether" phenomenon, I usually advise a quick filing of a provisional patent application on your idea as soon as you have faintest idea that it may be novel. More thorough searching and market analysis can be done once the application is filed. It is important to get your place in line by filing an application as soon as you think you have something so that you beat anybody else who may have "captured" this idea. If someone else files on your idea before you, it is no longer novel.

Obviousness is the big bugaboo and I will talk about that in a later post....stay tuned.....