October 31, 2011


Patent “Reform” — the America Invents Act — which is being implemented over the next eighteen months, makes significant changes to America’s patent system that will require business to adapt their procedures for evaluating and protecting their innovations.  Here are ten suggestions for handling the transition:

1. File patent applications on all existing innovations before March 16, 2013.  New sections 102 and 103 only apply to subject matter filed on or after March 16, 2013, by filing all new applications and continuations in part before then will ensure that the old sections 102 and 103 apply.  You don’t have to worry about proper continuation and divisional applications from pre-March 16, 2013 applications, which will continue to be covered by old sections 102 and 103, regardless of when they are filed. 

2.  File promptly on all new innovations after March 16, 2013.  The patent now goes to the first inventor to publicly disclose or file.  However, a public disclosure will generally bar filings outside of the U.S., so promptly file a provisional application, and file additional provisional applications on each new development.  Encourage more complete disclosure so that these provisional applications have an enabling disclosure and a proper written description of the invention.  Before the anniversary of the first provisional, pick and choose among the provisional filings to assemble a strong utility application. 

3.  Don’t use the invention in public or offer it for sale before you have a filing date.  The scope of the exceptions under new section 102(b) is unclear.  While disclosures by or derived from the inventor are covered, it is not clear that use or offer for sale is covered.  File before you create a bar to your own application.

4.  Don’t disclose the invention to others until you have a filing date.  As noted above, the scope of the exceptions under new section 102(b) is unclear.  While third party disclosures derived from the inventor are covered, it is not clear that use or offer for sale by recipients is covered.  File before you give third parties the ability to accidentally or intentionally bar your application.

5.  Manage the prior art effect of your activities.  A provisional patent application that is never published is not prior art.  File a regular utility patent application or convert the provisional application to a regular utility application so that it publishes.  Furthermore,  a published utility patent application only has an effective prior art date of the provisional application filing date if that provisional application complies with the written description and enablement requirements of section 112.  Consider making a non-patent publication simultaneously to a provisional filing to establish an early prior date.

6.  Update your Employee Agreements.  Amendments to sections 115 and 118 make it easier for employers to file applications on subject matter the employees assigned or have an obligation to assign to the employer.  Make sure that your employee agreement gives you the right to protect employee inventions if they become uncooperative.

7.  Watch your competition.  Amendments to section 122 expand your ability to submit prior art and other information to the examiner handling a competitor’s patent application.  Post Grant Review process has significant disadvantages, but a timely submission under section 122 may prevent a patent from issuing in the first place.

8.  Don’t throw away those inventors’ notebooks.  First to invent still applies to applications filed before March 16, 2013, so priority of invention remains an issue for at least the next eighteen months.  Even after March 15, 2013, inventors notebooks or similar records could be helpful in proving that an invention was not “derived” from another.

9.  Take advantage of Supplement Examination.  In less than a year, a patentee will be able to use supplemental examination to correct many actual or feared defects in a patent through supplemental examination.  However, Supplemental Examination only works if it is completed before the patent is asserted against a third party.  It behooves a patentee to listen carefully to all the defects pointed out by third parties, and fix them with Supplemental Examination.  Conversely, an accused infringer may want to be careful about revealing perceived problems with the patent, lest the patentee correct them before asserting the patent.

10.  Choose your method of patent challenge carefully.  The new law replaced Inter Partes Reexamination with Inter Partes Review (IPR), and creates a new Post Grant Review (PGR), both of which have significant estoppel effects, particularly PGR.  It may make sense to wait for IPR (which can only be filed after nine months from issuance) or to use ex parte reexamination, which can be filed any time after issuance and does not have the same estoppel effect if unsuccessful.

If you have any questions about exploiting the changes in patent law to your advantage, please contact an HDP attorney.