Maryland Bar Bulletin
Publications : Bar Bulletin : March 2013

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The most significant change to U.S. patent law since 1836 or 1790 was implemented on March 16, 2013. As part of the America Invents Act of 2011, this last phase of the Act concerns the doctrine of first-to-invent, laws concerning the protection of original inventors, whether or not they were the first to file for patent. 

The law will now award inventorship under a first-inventor-to-file standard. Emphasis is now placed on inventors seeking immediate patent protections, preferably before any disclosures to any third parties and patent filings of others. 

Whereas under the law such disclosures were somewhat protected and true inventorship ascertained and rewarded, those protections have almost all been eliminated. Now, there are greater hazards to inventors, particularly small inventors. And these hazards could possibly preempt inventors from obtaining a patent entirely.

The so-called grace period of one year from a public disclosure of an invention to patent filing under the old law is technically still there.  However, third party patent filings during that grace period now trump the earlier inventor, merely by going to the Patent Office first. This change in the law tries to objectify determination of a true inventor – instead of engaging in procedural challenges called interferences, which are now eliminated. 

Many view this substantive change as contrary to the philosophy of the U.S. patent system, which rewards true and original inventors, i.e., the first to invent.  The new law is patterned on that of foreign patent systems, which place much less emphasis on the individual, and favor corporations, which want more certainty in the patenting process.

Since some third party patentees may derive their “inventions” from primary inventors, who are second to file for patent, new proceedings determine inventorship under these circumstances. These derivation proceedings are mini-trials, with evidence, to ascertain whether or not the earlier inventor was primary and whether or not the later-filer gleaned the invention from them, e.g., by theft or other means. The U.S. Patent and Trademark Office over the past year or so has been hiring and training hundreds of Patent Office judges for the purpose of hearing these proceedings and administrating many other new proceedings already implemented under the Act, e.g., various post-grant opposition actions to challenge newly-issued and all other patents.

For clients, although there are ambiguities of the new law, there are some clear lessons. First off, first to file means just that, with the consequent of possible automatic curtailment of patent rights for many second filers. For example, a small client is typically unaware of the extremities of the patent laws with regard to deadlines.  Publication or dissemination of the invention prior to filing for patent already kills virtually all patent rights outside the United States.  Often, these clients are well into the grace period when they consult a patent attorney.

Now, those same clients may have unwittingly destroyed their opportunity for patenting by delaying the filing.  Fortunately, provisional or informal patent filing is available and can preserve patent rights, if filed before others.  Unfortunately, those rushing to file these informal and often sketchy documents may find their patent descriptions challenged for insufficiency, e.g., the details may be so bare as to raise a question on whether the inventor was in possession of the invention claimed.

Thus, the new law raises the bar in patenting and the burden almost entirely falls on small inventors and small companies. Indeed, the full measure of the penalties for not adhering to the patent laws, e.g., not promptly filing a patent application, are the most dire – no patent and no protections against copying.

The countermeasure is, of course, education and consultation with a patent attorney early in the innovation process - and definitely prior to third-party disclosures.  Often, great minds think alike and others are also addressing the same technological problems.  Putting the inventive thoughts to paper is, however, often a difficult thing for some inventors. 

Since a patent is a property right, its contours must be set forth in detail.  For example, in land purchases, the delineations of the property line are critical. So, too, with patenting, where the patent claims carve out a portion of new technology, separate from what is known.  A patent attorney can help navigate this terrain.

For general attorneys, make this change known to clients that are considering patenting. It is very important to be first to file a patent application under a post-March 16th first-inventor-to-file standard.  Sadly, the actual contours of this change in the law will not be known for many years – after the courts make pronouncements – but it is the law.

Raymond Van Dyke of Van Dyke Law is a patent attorney and educator with an office in Washington, D.C.

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Publications : Bar Bulletin : March 2013

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