By Chinh H. Pham, patent attorney and shareholder, Greenberg Traurig LLP - Boston
Everything you know about patent law is about to change.
Well, maybe not everything. But enough will change that it may be urgent to submit patent applications before March 16, 2013 -- a momentous deadline when many provisions of a new patent law goes into effect.
The law is the Leahy-Smith America Invents Act ("AIA"). Signed into law in 2011, the AIA is the first comprehensive overhaul of the US patent system since 1952. The first thing to go: the first-to-invent rule, a foundational principle of patent law, in favor of a new rule: First to file.
For video game developers, who depend so much on patents to protect their work, filing before the March 16 deadline is the only way to take advantage of current patent law.
Under the former patent system, an inventor who conceived of a technology first, but filed a patent application after a competitor, can still be entitled to a patent on that technology. However, in the new first-to-file system, the first applicant to file a patent application is entitled to a patent regardless of who conceived of the technology first.
This “first-inventor-to-file” regime will have profound ramifications for the patent filing strategies of videogame developers. The new system encourages inventors and companies to file patent applications quickly—almost at the proof-of-concept, or invention-formation, stage. To keep up with this race to the patent office, inventors and companies will need to streamline and accelerate their invention disclosure collection and review processes.
There will also be a larger applicable pool of prior art after the deadline. Prior art, or any art that exists before a filing, is of critical importance because a patent will not be granted for an invention described in prior art.
Under the current patent system, public uses and sales by a videogame company do not act as prior art against a claimed invention unless they occur in the US. Under the new AIA laws, public uses or sales anywhere in the world could serve as prior art. By waiting to file until after the change in the law, there is a possibility that a published reference or public disclosure which would not have been considered prior art before March 16 will now be considered prior art, and could block your patent claim.
So under the current law, any publications, public uses, or sales by anyone that occur within one year of the first US filing date may be removed from the applicable pool of prior art if the claimed subject matter was invented prior to those publications, public uses, or sales. Under the new AIA laws, prior activities of others cannot be removed from the applicable pool of prior art and can affect the claimed subject matter.
One last thing. The new post-grant review process of the AIA will not apply to a non-provisional patent application – a patent in which there is at least one claim, and which will be examined -- filed before March 16, 2013. The term non-provisional patent claim was coined to distinguish regular applications from provisional applications, which are which are not reviewed by the US Patent and Trademark Office, but serve as a placeholder. Provisional applications must be followed by a non-provisional application or there won’t be a patent issued (you can’t get a provisional patent).
The post-grant review provision was effective as of September 16, 2012, one year from enactment of the AIA, but applies only to patents issued from “first-inventor-to-file” applications filed after March 16, 2013. The new post-grant review process allows companies to challenge patents on any grounds of invalidity during a nine-month window from the issue date of a patent, with an aim of shifting the patent challenging arena from the courts to the US patent and Trademark Office.
Video game companies that won’t be ready to file before the March 16 deadline should consider patent strategies early in the design phase, rather than wait for a development of a prototype or game. That will be the only way to set some early priority dates, and maintain a competitive advantage in a rapidly changing arena.
Chinh H. Pham is a registered patent attorney with particular experience in the strategic creation, implementation, and protection of intellectual property rights for high technology clients. Pham can be reached at email@example.com.
The State of Play blog, organized by MassDiGI, features posts by digital and video game industry insiders writing about creativity, innovation, research, and development in the Massachusetts digital entertainment and apps sectors. MassDiGI, based at Becker College, is a statewide center for academic cooperation, entrepreneurship, and economic development across the local games ecosystem. Follow along @Mass_DiGI.
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