Much will change in the patent management world as the America Invents Act takes effect. Here’s a list of 4 important changes to keep in mind:
- File Early and Often. Since the Act changes the U.S. patent system from a first-to-invent to a first-to file, inventors will need “to race to the U.S. Patent and Trademark Office with high-quality provisional filings, which can be turned into full applications within a year,” reports Sheri Qualters in a recent National Law Journal article. "They should make sure their initial filing provides good support for all of those features that they're later going to claim," said Steven Koffs, a partner and senior patent attorney at Philadelphia's Duane Morris.
- Pay to play. Having large entities pay an extra $4,800 and small ones $2,400 for a speedy patent application review is a huge benefit for many clients, Rod Berman, a Los Angeles lawyer who chairs the intellectual property group at Jeffer, Mangels, Butler & Mitchell said in the article. This gives the USPTO the goal of completing the application within one year. That provision went into effect on Sept. 26, 2011.
- Do over very carefully. Patentees should use caution when correcting applications via a new supplemental examination procedure expected on line Sept. 16. The procedure's chief use is to defuse allegations of fraud. The USPTO has 3 months to decide if the new information raises a new question of patentability. If USPTO believes the first filing was fraudulent, sanctions could follow.
- The importance of prior use. Patent infringement defendants can now argue that their prior commercial use of the technology in dispute protects them. Previously this defense applied just to business-method patents. No longer. BVR’s Intellectual Property Management and Valuation Reporter covered this in depth in our February issue.