Q. My company recently developed a valuable technology that we plan to bring to the market in the future. With the new federal patent laws, how should we best protect the invention?
A. On September 16, 2011, President Obama signed the America Invents Act, ushering in the largest overhaul to the U.S. patent system in 60 years. Although many of the changes are phased in over the next year or so, it is critical for companies and individual inventors to begin planning for the changes immediately.
The most significant change alters the U.S. patent system from being a “first-to-invent” system to a “first-to-file” system, which brings the United States in line with most other countries in the world. Under a first-to-file system, even if an inventor is not the first person to create an invention, the inventor may still receive a patent if he or she files a patent application with the Patent and Trademark Office (PTO) before others. Thus, if company A spends years developing a valuable technology and completes its invention prior to Company B does, Company B may still be able to obtain the patent on that technology so long as it filed its patent application first.
Prior to this change in the law, the United States used to be a first-to-invent system. This meant that even if Company B was first to file its patent application, Company A could still obtain the patent rights if it could establish that it created the invention prior to Company B. This rule allowed inventors to take some time to consider the marketability of their invention before deciding whether to begin the costly process of obtaining patent protection.
Once the first-to-file change becomes effective March 16, 2013, companies and individual inventors will no longer have that luxury. Although there are provisions that will allow for limited grace periods, the safest route is for companies to become in the habit of filing patent applications as soon as possible after invention.
Fortunately, the new law continues to allow inventors to file “provisional” patent applications to obtain an early filing date. Provisional applications do not require all the formalities of a standard patent application and can be prepared much more quickly and at lower cost. To protect their inventions, companies and individual inventors should at least file provisional patent applications as quickly as possible after creating an invention to win the race to the PTO.