Patent Reform: What you need to know to stay ahead of the competition come March 16

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Congratulations! Your technology venture is moving along full speed ahead. The company is selling the latest and greatest products in its industry and is continuing to develop and innovate within its field. With this innovation, your company is also active in filing patent applications to protect its investment in research and development.

While your company is on the right track, have you considered how the upcoming changes to the patent system can affect the patentability of your technology?

On March 16, 2013, under the America Invents Act, the United States transitions from a first-to-invent to a first-inventor-to-file system. Currently, an inventor will be denied patent protection for an innovation if it was disclosed in a reference, called “prior art” in patent-speak, prior to his invention date for the innovation. With the change under the Act, an inventor will be denied patent protection for particular technological innovation if it was disclosed in a reference prior to his filing date for a patent application on the technology.

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Additionally under the Act, there is a wider scope of prior art available for consideration with respect to the patentability of the invention. For example, assume you file a patent application for a particular invention. Under the Act, if the invention is described in a printed publication, is in public use, is on sale, or is available to the public anywhere in the world prior to the filing date of the patent application covering the invention (all examples of prior art), you will be denied patent rights. Also under the Act, if the invention is described in an issued patent or patent application publication which was filed before the filing date of your company’s patent application, you will likewise be precluded from obtaining the patent, regardless of the invention date.

How does all of this affect your company’s patent strategy?

First, it is critical to identify your patentable innovations as early as possible. For example, you should consider establishing or revising in-house invention disclosure procedures that allow your engineers and technologists to bring ideas to the attention of decision makers in your organization as soon as they are conceived. This can be done by encouraging the submission of invention write-ups to your business managers on a regular basis. Alternately, you might schedule ongoing meetings between the technologists and business managers to discuss and review innovations and projects. By identifying your innovations early in the process, you can determine if the innovations rise to a patent-worthy level, allowing you the opportunity to take appropriate steps to protect those innovations.

Next, to avoid potential prior art issues after identifying patentable innovations, you will want to obtain as early a patent application filing date for your innovation as possible. After the transition to the first-to-file system, a delay in filing can mean the difference between obtaining a patent and being left out in the cold. A time effective way to get your invention on file with the United States Patent Office is by utilizing a provisional application. From a procedural standpoint, the filing requirements for a provisional application are relatively minimal. With this in mind, a provisional application can be prepared in a relatively short amount of time which can help minimize any delay in filing.

While the change under the America Invents Act may not drastically change your company’s filing strategy, there is a need to remain vigilant regarding the innovations developed by your technologists, as well as to establish in-house procedures to file patent applications on those innovations as soon as possible.

Jeffrey J. Duquette is an Intellectual Property attorney at Mirick O’Connell, located in Westborough, MA. Jeff works closely with business owners, executives, entrepreneurs, inventors, scientists and investors to help ensure that business goals are met while intellectual property assets are appropriately and efficiently protected.  Mirick O’Connell has offices in Worcester, Westborough, and Boston. 

This article is intended to provide information of general interest.  It is not intended to constitute legal advice regarding a client’s specific legal issues and should not be relied upon as such.