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Posted: January 18, 2013

File that patent!

Time is running out

Kurt Leyendecker

Do you or your company have a product or process that you’ve been developing for some time but have yet to patent? If so, a new law could considerably affect your ability to patent.

In 2011, Congress passed the America Invents Act (AIA), with the provisions of the act to be amended over time.  The most significant provision takes effect on March 16, switching the U.S. patent system from a first to invent paradigm to a first to file paradigm. This change brings U.S. patent laws in this regard in line with those of almost every other industrialized nation.

Under the old paradigm, the pertinent consideration in awarding a patent to one person over another was when the inventor first conceived of his or her invention. Conception of an invention occurs the first time an inventor mentally envisions the invention: in other words, the “ah ha” moment. At this moment, the inventor might not know exactly how the invention will work or be implemented, but the invention is formulated in her mind to a sufficient degree. It is considered a sufficient degree if the details of the invention can be disclosed to someone of at least average skill in the particular field to which the invention pertains, and this person could, through the development process, make or implement the invention. 

After conception, an inventor is required to reduce the invention to practice. This can be accomplished in one of two ways: by actually making or implementing the invention or by filing a patent application. Providing the inventor is diligent in developing the invention from conception through reduction to practice and files a patent application, she will be awarded a patent over co-pending applications by inventors who later conceived of a similar invention. The foregoing is the case even if the other inventors actually filed a patent application first. 

All this changes on March 16, when only the inventor who first files a patent application on a particular invention will be eligible for a patent. If you file your application on March 17, it will not matter at all that you have been working on the invention diligently for years. Rather, someone else who first conceived of the same invention independently of you only a month ago, but files a patent application before you on March 16, will be awarded the patent.

The new first to file paradigm will change the inventing process in the United States. For instance, in my firm's practice, we will be recommending that clients file patent applications sooner rather than later, even if there are a few bugs to be worked out in a particular invention. In the past we often recommended the inventor perfect his invention before filing, since the filing date was not wholly determinative of patent priority. If the invention changes after the application is filed, an additional sibling application can be filed to incorporate any new or different features. Inventors will also be encouraged to more quickly reduce an invention to practice, compressing development times as much as possible.
For smaller companies and independent inventors, the new paradigm may prove more costly, requiring more resources to be expended on development and requiring filing of additional patent applications as a new product morphs into a final design during development. Certainly, these changes favor larger entities with substantial product development and legal budgets.  However, large companies are also often bureaucratic in nature and take longer than they should to accomplish even the most sensible tasks, so their new-found advantage may not be fully realized.

Nevertheless, this column is a call to action for any company or individual that has a product or process that they have been developing for some time to consider filing a patent application on the invention before March 16, thereby preserving first to invent status for the invention. 

As the lead times in drafting a patent application can be significant, the sooner you discuss your situation with a competent patent attorney the better. Filing before March 16 instead of after could make all the difference in whether you can ultimately receive patent protection.

Kurt Leyendecker is a founding member of the intellectual property law boutique, Leyendecker & Lemire. Leyendecker & Lemire specialize in patents, trademarks and related complex civil litigation. Kurt Leyendecker can be reached directly at 303.768.0123 or kurt@coloradoiplaw.com. Visit www.coloradoiplaw.comfor further information, including Leyendecker & Lemire’s weekly blog, “Control, Protect & Leverage.” 

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