Patent Law Changes: Should You Try To File?

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If you have an invention that you think may warrant patent protection, you may want to consider filing an application before March 16, 2013 because the patent laws are changing.

Well over a year has passed since the passage of the America Invents Act and the countdown to the transition from the U.S.’s first-to-invent patent system to a first-inventor-to-file patent system.  While this change isn’t near as dramatic as say, the Y2K debacle (was it a debacle?), the conversion does potentially affect your ability to obtain a patent if you have an idea that is ready for patenting now, but you wait to file after the conversion date (i.e., March 16, 2013).

The Differences

The primary difference in the first-inventor-to-file system is the application of “prior art” – prior art includes, among other things, patents, publications, and publicly known or disclosed apparatus or methods that predate your invention.  The change is twofold:

  • Under the current law, if you invent something today, work diligently on the invention, and file a patent application in a year, your “date of invention” is today, and thus all prior art that could potentially keep you from obtaining a patent must be from before today.  Under the new law, if you invent something today, but wait to file for a year, your “date of invention” is the day you filed the application.  Thus, prior art that was developed between today and when you file could be used to deny you a patent because your idea would no longer be new and/or non-obvious and thus not entitled to patent protection.
  • Additionally, if you file after March 16, 2013, there is more “prior art” that will be considered by the US Patent and Trademark Office (USPTO).  For example, the law removes some geographical limitations from what the USPTO could consider as prior art.

As a slight counterbalance, just after March 16, the USPTO is altering its fee structure and lowering costs for filing patent applications and introducing a “micro-entity” designation that allows for applications to reduce their fees by 75%.

What to do:

What should you do? There are a number of things to consider, but at bottom, filing before March 16 may be worthwhile if:

  • The idea ready is for patenting – you can articulate what the components of the invention are or the steps in the process such that a peer could understand how to duplicate your invention;
  • The idea is an important aspect or foundation of your business;
  • There is a lot of activity in the field of your invention; or
  • You are concerned that a competitor is close to developing a similar product.

If the answer to one or more of the above questions is yes, and you have an idea that may be patentable, you’ll want to talk to your patent attorney/agent well in advance of the March 16 deadline to determine whether it is worthwhile to file an application before the transition date.  For example, there are options, even if your idea isn’t fully developed, to provide at least partial protection of your idea without sacrificing your invention date.

See also: PatentlyO

This post was corrected on Feb. 13, 2013.