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Posted: September 18, 2012

Invention alert

Does the new law spur innovation or hurt the little guy?

Kurt Leyendecker

About every 10 years, Congress reforms the patent statute to correct various issues and problems it sees in the patent system.

About a year ago, the America Invents Act (AIA) became law. The act represents the most significant changes to the patent system in more than 50 years.

The President and Congress have touted that the changes will help spur innovation. Other groups, largely those representing independent inventors, have panned the act, claiming it hurts the small guy. The reality is that the AIA won't change much pertaining to innovation and it won't hurt the small guy much either. There are some good things and bad things in the act but more than anything else, it heralds in change.

Perhaps the most significant change for Coloradoans is that it authorizes the creation of several satellite patent offices, including one in Denver. The Denver office will likely open within the year and the Patent Office has already posted ads for patent appeals judges. The new office may provide for convenient, local, in-person access to patent examiners for Colorado inventors with inventions falling into the categories processed in Denver. Currently, in-person access to an examiner requires a trip to Virginia, but in most cases, given practicality discussions are conducted over the phone. Experience tells us that direct telephonic communication with an examiner can often facilitate quicker approval of a patent application. Face-to-face communication portends to be even more effective.

The local implications aside, the most significant change heralded in by the AIA is the change from a First to Invent to a First to File patent filing system. Under the current system, when two people independently invent substantially similar inventions and both file patent applications, the inventor who invented first will typically be awarded the patent over the second inventor, regardless of who filed the patent application first.  Under the new system, which becomes effective on March 16, 2013, the inventor that files a patent application first will be awarded the patent.

Of course, the foregoing is a simplification: in reality; the patent laws are extremely complex and nuanced, introducing all sorts of exceptions and deviations from the bright lines presented above. Nevertheless, the changes are going to necessitate a paradigm shift for companies and inventors in how they manage and protect their intellectual assets. 

For example, under the current system, a company would be well served to keep its innovation under wraps as it works diligently to finalize and refine it, filing a patent application just before the new product or service is introduced to the marketplace.  Under the new system, however, a company would be best advised to file at least a provisional patent application as soon as possible after the innovation’s conception to beat any other companies that might have similar ideas after it. Either file for a patent or publicly disclose the innovation first.  As an added bonus under the new rules, the first company to file a patent application or disclose a new invention will effectively foreclose the ability of any other inventor or company from patenting the innovation. Whereas keeping your innovation close to the vest has been the rule for well over a hundred years, the new paradigm rewards filing patent applications early and often.

As the nation transitions to this new filing system in six months, it behoves a company to take stock of its current situation pertaining to inventions and innovations. Are there inventions the company is currently working on that might benefit from the first to invent rules? If so, the company should consider filing patent applications before March 16th. New procedures may need to be drafted changing the manner in which new inventions are processed. Because there are nuances to the coming changes that cannot be adequately explained in a short column, companies and individual inventors alike that are working on current inventions may want to touch base with their intellectual property lawyers to make sure their rights are not compromised by the switch. 

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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