The America Invents Act, passed Sept. 16, 2011, contains reforms that will affect businesses in many ways, including how they must pursue patents. One of the goals of this legislation is to standardize U.S. law with the way the rest of the world handles patents. The change that is receiving the most attention is the switch from first-to-invent rights to first-to-file. The new system goes into effect in March of 2013.
“The U.S. has its own version of first-to-file,” says Timothy E. Nauman, partner with Fay Sharpe LLP. “But generally, it will be similar to what the rest of the world has been doing. The patent will be issued not to who first thought of the new idea, but to who filed first.”
Smart Business spoke with Nauman about what you need to know about the changes, and how they may affect your business.
Have any of the act’s reforms gone into effect already?
Yes, a few. Accused patent infringers used to be able to claim the plaintiff’s patent was invalid because it didn’t describe the ‘best mode’ of practicing the invention. ‘Best mode’ as a defense is no longer supported by the patent act.
Second, there was a provision that allowed any third party to bring a lawsuit indicating that a patent owner was mis-marking its patents. For example, a manufacturer may make a product for which the patent expired years ago. However, the mold was never changed, so the expired patent number still shows up on recently manufactured products.
Someone figured out that you didn’t have to suffer competitive injury to file a false marking lawsuit. Companies grew tired of dealing with constant lawsuits, and there was a backlash. Now, you have to actually be competitively damaged to sue.
How will the act affect patentability or patent validity claims?
There are new procedures for challenging the patentability of an invention or to challenge the granting and validity of a patent. These changes aren’t going to be enacted until September, 2012.
One of the new procedures is the post-grant review process, a nine-month period in which a patent can be challenged. This is similar to what is called an ‘opposition’ overseas. For example, this provides a way to challenge the patent at the administrative level instead of going to court. This is useful, because going to court can be an expensive proposition and time-consuming.
For businesses, this opposition process could be looked at as a hassle, but it could also be considered helpful in removing the garbage from the family of valid patents. If your patent survives the challenges provided by these new processes, it’s probably a good patent. If your invention is worthy of a patent, it would likely pass these challenges anyway.
How will the act change the way rightful patent owners are determined?
The U.S. has always used a first-to-invent system. In that system, if you came up with an idea, and I came up with the exact same idea completely independent of you, and we each file a patent application, generally, the patent is awarded to the person who is determined to have been the first-to-invent.
You and I could end up in an interference proceeding, in which the Patent Office or the Court would evaluate the evidence of first-to-invent. We have to show when we first conceived the invention, when we reduced it to practice, and how diligent we were.
Inventors keep notebooks with this information, which are signed and dated by a lab partner or someone else who works closely with them. You can also prove you came up with the invention on a particular day by showing an e-mail that describes the invention. The e-mail recipient will be able to corroborate that evidence. Without evidence, you could lose to a party that conceived or reduced the invention to practice after you.
The switch to a first-to-file system is designed to simplify the process, and will make U.S. patent laws similar to procedures in most other countries in the world.
How will the change from first-to-invent to first-to-file change the way U.S. businesses operate?
Some will tell you the change to first-to-file doesn’t mean a thing for big businesses, because multi-national companies file applications around the world anyway. They have already been dealing with a first-to-file system in other countries. The fact that first-to-file is being enacted in the U.S. won’t change how these companies pursue patents.
Others will tell you there is a bit more urgency, an added pressure to reduce the time from when an invention is conceived to the time the patent application is filed to minimize the chance of a competitor filing first on a similar invention.
Newspapers have reported that this was a friendly patent act for the little inventor. The fees may have gone down some for them, but one potential problem is that the small inventor may have to invest in filing an application a little quicker than they would have wanted. This is no small issue, especially when you consider the thousands of dollars it costs to file and pursue an application. In the past, a patent attorney may have encouraged the inventor or company to test the market for six to nine months to see if there is a demand for the product, get a business plan ready, then decide whether or not to file. Today, a patent attorney may tell them to push their timeframe up a bit to complete a patent filing.
Timothy E. Nauman is a partner with Fay Sharpe LLP. Reach him at (216) 363-9136 or firstname.lastname@example.org.