Switching the U.S. patent system from a “first-to-invent” to a “first-inventor-to- file” system
By Henry Lenard
October 24, 2012
Protecting Intellectual Property
Significant changes to the U.S. patent system for the first time in 50 years are on the horizon with the passage by Congress of the America Invents Act. Those modifications are expected to dramatically impact the robotics industry beginning in March.
The major provision of the AIA switches the U.S. patent system from a “first-to-invent” to a “first-inventor-to- file” system, according to Christine Ethridge, a partner in K&L Gates’ intellectual property practice. Her comments were part of a discussion of the AIA and other aspects of proprietary property at a presentation at the RoboBusiness Leadership Summit in Pittsburgh.
The AIA also creates a post-grant review system to weed out bad patents and help the Patent and Trademark Office address the backlog of patent applications. The changes are designed to encourage innovation, job creation and economic growth by reducing frivolous litigation and creating a more efficient patent approval process.
“My advice to you is to win that race to the patent office and file early and file often,” said Michael Lazzara, also a partner in K&L Gates’ IP practice. He added that individuals and companies should also be thinking about “commercialization down the road” when filing.
The switch to “first-inventor-to-file” takes effect on March 16, 2013, a date of which all potential patent filers need to be aware.
Ms. Ethridge said that patents can have a number of advantages for robotics companies, including blocking competition, attracting investors, for use as collateral, for use in cross-licensing in settlement of patent infringement action and for licensing for future revenue streams.
There are also things not to do before filing a patent, especially if patent protection outside the U.S. is desired.
“Patents can have a number of advantages for robotics companies, including blocking competition, attracting investors, for use as collateral…”
“Never publish a manuscript, paper or thesis, and beware of electronic publishing. You should also never disclose a new invention in a presentation or discuss it with anyone without a signed confidentiality agreement,” said Ms. Ethridge.
In addition to “filing early and often”, Mr. Lazzara also offered several other ‘good practice’ patent strategies, including maintaining the invention in confidence until after the patent is filed, and keeping detailed records of all disclosures to any party.
“In filing, you should also be over-descriptive in the application, remembering that your target audience includes patent examiners, judges and juries,” Mr. Lazzara said. “Laws vary among countries and may change, requiring more stringent examination and interpretation of patent claims.”
Ms. Ethridge and Mr. Lazzara said that potential problems can also be avoided by considering patent clearance reviews before and during product development and before product launch. This is particularly important when third-party patents may potentially block your products.