Take heed, o inventor: Beware the Ides of March

In 44 B.C., the Ides of March witnessed the end of Julius Caesar. This year, 2013 A.D., the Ides of March will bring an end to the “first-to-invent” principle of U.S. patent law – a paradigm that has been a hallmark of U.S. inventions for more than 200 years.

Currently, the U.S. patent system is based on a unique first-to-invent doctrine, which means that the inventor who first conceived of the invention is considered the first inventor and is entitled to patent protection.

Countries in the rest of the world, however, have patent systems based on a “first-to-file” doctrine, where the patent is granted to the inventor who is the first to file a patent application, regardless of the date of invention.

After March 15, the America Invents Act (AIA) will transform the U.S. patent system from the first-to-invent system to a “first-inventor-to-file” (FITF) system. A policy behind the AIA is to harmonize U.S. patent law with the rest of the first-to-file patent world. Note that the AIA does not move the United States to a true first-to-file patent system in which the person first to the patent office prevails. Under the FITF system, a one-year grace period is provided for filing a patent application after a public disclosure by the inventor.

AIA will greatly expand prior art

After March 15, the AIA will also greatly expand the universe of “prior art” – i.e., publications and other information that can be used to prevent the granting of a patent application. The AIA changes the language of 35 U.S.C. § 102 to encompass a much broader range of material that can be used by the U.S. Patent and Trademark Office (USPTO) to bar a patent from being issued.

To prepare for the dramatic changes coming with the Ides of March, savvy innovators may wish to consider the following measures.

  1. File patent applications on any inventions by March 15, if not sooner. Applications filed by March 15 will be grandfathered under the current first-to-invent system and the narrower definition of prior art. Another advantage: Filing by March 15 can extend the first-to-invent system for years into the future. A chain of one or more continuation/divisional patent applications claiming priority to an application with an effective filing date on or before March 15 will also be grandfathered under the current first-to-invent system.
  2. Prepare for the new regime. After March 15, the race to the USPTO begins. Under the new FITF system, an inventor who waits to file an application may risk losing his or her patent rights to an inventor who invented later but filed first. The AIA will place an added incentive to file a patent application in order to merely prevent others from patenting one’s own invention.
  3. Maintain good records. The AIA brings new impetus for documenting research and development activities. Accurate lab notebooks may be relied upon to show first invention by the inventor that occurred within the one-year grace period. Maintaining good records can be used to overcome third-party prior art to a later-filed application. Strong research records may prove essential in the AIA’s new derivation proceeding – a procedure whereby a “true inventor” can challenge one who took (stole or “derived”) his or her invention.

    Finally, a well-implemented recordkeeping protocol may deter departing employees, consultants, or joint venture partners from attempting to obtain patents on the company’s own innovations.

  4. Harvest valuable patent rights. Good recordkeeping can also be a valuable foundation for methodical evaluation of innovations. Regularly assessing key innovations will speed up the patent filing process, which is vital under the new AIA patent regime. A committee of decision-makers, charged with harvesting valuable patent rights and assisted by patent counsel advising on patentability and third-party risk, can efficiently identify patent assets worth protecting before valuable rights are lost.

The AIA and its new paradigm will have profound implications for patent stakeholders. Taking proactive steps now – and after March 15 – will help to ensure that patent rights are maximized. Innovators: Do not fear, but take heed, and beware the Ides of March!

Ted Barthel and Thomas Pienkos are intellectual property attorneys in the Milwaukee office of Whyte Hirschboeck Dudek S.C. Barthel is also registered to practice before the U.S. Patent and Trademark Office.

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