Four important things to know as the America Invents Act goes into effect

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:

  1. 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.
  2. 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.
  3. 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.
  4. 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.