"This is an invited post from patent attorney Vadim Gordin of GordinIP, who is not affiliated with BioBM Consulting. This article is intended to be purely educational and cannot take the place of legal counsel. If you have a patent, trademark, or copyright matter to discuss, the author can be reached via the contact form on his practice website at www.GordinIP.com
Rules of the Game: What every Engineer, Scientist, and Inventor should know about the Patent Reform Bill
On Friday, September 16th, 2011 President Obama signed into law the America Invents Act (hereafter AIA, full text here: pdf of AIA).
The AIA has had no shortage of both backers and detractors that have each said that it would be either the panacea or poison for American innovation. Regardless of where your own opinion falls as to the AIA, the bill and its changes are now set to become a very real part of the technology development landscape in America.
This article will be published in four weekly installments. In each installment, I will examine how the AIA changes four key areas of the patent process for engineers, scientists, and inventors.
• Part 1: Patent Filing Dates and Deadlines
• Part 2: What content needs to be included in a Patent Application, New Mechanisms for Challenging Patents
• Part 3: How products protected by patents should be marked, New mechanisms for Enforcing Patents
• Part 4: Changes to Patent Fees
First To File Explained
This is one of the most talked-about and misunderstood provisions of the new law. In order to understand what it means for inventors and companies, we need to first compare the current US patent system to those in other parts of the world.
Before the AIA, standard advice to American inventors was to keep accurate, signed, and dated records of their innovations before patents were filed. The purpose of these records and notebooks was to establish, as clearly as possible, the dates on which inventions and aspects of inventions were conceived. This was because the patent laws of the United States protected the first person to invent a given technology. Further, because of this focus on inventorship, inventors in the United States were given one year from first sale, public use, or printed disclosure of an invention to file for patent protection.
Other parts of the world, notably Europe and Asia, have strict “First to File” systems whose focus is on the act of submitting a patent application to a given patent office. There, any public use, sale, or pubic disclosure of an invention before its submission as a patent applicaiton prevents anyone, including the inventor, from pursuing patent rights.
With the coming of the AIA, the US has shifted from a First to Invent system to a First Inventor to File system. In broad terms, this means that priority of invention is given to the first inventor to file a patent application. While this sounds similar to the pure “First to File” systems in place in other parts of the world, there are several key differences that American inventors, engineers and scientists should be aware of.
• The AIA maintains the US system’s focus on inventorship. Therefore, in order to receive a patent one must have still have been the actual inventor.
• The AIA shifts the date of priority for US patent rights to the date on which the inventor first filed a Patent Application.
• Under the AIA, American inventors no longer have a one year grace period during which to file a patent application after public use or sale of inventions, bringing US laws largely into line with the rest of the world.
• The AIA creates a one year grace period after publication of the invention by the inventor within which he can file for patent protection.
To illustrate the different patent systems and how they would play out in Europe compared to America before and after the AIA, let’s use a fictional example under the following timetable:
June: David invents a novel device for time travel.
July: David publishes an article describing the device in the Annuls of Time Travel.
August: Another inventor, Rob, working independently from David, also invents a similar device for time travel and immediately files for a patent.
September: David files for patent protection.
So what would happen under the different systems?
Pure First to File (Europe, Asia, Canada): Both David and Rob are precluded from getting a patent because David published his article before either filing.
First to Invent (United States before the AIA): Rob’s patent is barred by David’s invention in June.
First Inventor to File (United States under the AIA): Rob’s patent is barred by David’s publication in July.
So what has changed about how inventors publish, sell, and patent their innovations?
1. When to File
Even before the AIA, American inventors interested in securing rights in Europe, Asia, and South America had to be weary of publishing or selling their inventions before making filings with a respective patent office. This is double true now that America has aligned itself with the rest of the world by barring applications on inventions that were sold, publicly used, or disclosed before an invention’s filing date.
In order to help alleviate the added cost of these filings, the AIA includes new fee guidelines which will be discussed in the fourth installment of this article.
2. When to Publish
As shown in the example above, an inventor’s own publication of the invention gives him one year within which to file for patent protection. While this may seem like a cheaper, quicker way to prevent others from filing patent applications, several considerable caveats apply:
a. Publishing about a Invention before filing an application bars an inventor from pursuing rights in countries with pure first-to-file systems.
b. Publications prepared by non-attorneys often contain enough information to render an invention obvious and therefor bar patentability without having enough detail to secure patent rights. As before the AIA, your best bet is to have an attorney review a publication before it goes out.
c. If you’ve gone so far as to have you publication checked and edited by an attorney, you should be filing a provisional application as it will not preclude rights in the rest of the world.
3. When to Sell or Publicly Use
In the past, many inventors have delayed the patent process in favor of first generating revenue or buzz around a product. Once the AIA comes into effect in 2013, such actions would preclude patent rights.
Even before the AIA comes into effect however, inventors are cautioned that a delay in submitting a patent application will often result in precluding patent rights in Europe, Asia, and Canada.
4. Lab Notebooks and Invention Records
While many have understood the above changes to mean that the days of lab notebooks and invention disclosures are gone, the answer as to how the AIA will affect innovation record-keeping in America is much more nuanced.
While the AIA has largely obviated the question of “when” an invention was conceived for the purposes of patenting, “who” invented, in what order, and under what circumstances remain important inquiries for the patent system, many universities, tort liability, and regulatory bodies like the FDA. Consequently, inventors are strongly advised to continue, as taught, to maintain accurate records of their labors.
While some of the changes covered in later installments take effect immediately, the AIA sections described in this article will take effect in March of 2013.
Next week: What content needs to be included in a Patent Application, New mechanisms for challenging patent validity.
"About the Author: Vadim Gordin is a patent attorney and technology broker licensed to practice law in the State of New Jersey and before the United States Patent and Trademark Office. He can be reached via the contact form on his practice website at www.GordinIP.com