Posts Tagged “New rules”

I doubt that it’s news to many people that the US is changing from a so-called first-to-invent priority system for awarding patents to a first-(inventor)-to-file system. And that pending change (March of 2013) has a lot of people running around as if the sky were falling. It’s not. You aren’t really in a race to the patent office to beat another inventor.

For most inventors this switch, per se, will have no effect on their patent applications. The chances that you and another inventor more or less simultaneously invent and file the same invention is small. After all, there are currently just a handful of “interference” procedures to sort out who was the first to invent. And in those procedures, the first inventor to file usually comes out on top anyway.

That’s not to say the switch will not have an impact on you. The collateral damage from the switch to first to file is that the scope of problematic prior art is significantly increased. In the present system you can “swear behind” a piece of prior art by presenting evidence that your date of invention was earlier than the date of the prior art.

Such swearing behind only makes sense when the date of invention is important (as it is now). Essentially you are proving that you had fully conceived your invention before the piece of prior art was known to the public; even if it took a year of diligent work to reduce your invention to practice (during which time the prior art became public) you are still entitled to the patent.

Under first-to-file, the idea of using the date of conception to provide priority goes out the window… all first to file cares about is, not surprisingly, when you file. But even this change is not a totally new concept to wrap your head around. If you’ve even been interested in getting a patent outside the US you have seen this issue before. In virtually the rest of the world, “absolute novelty” reigns; if your invention has been disclosed to the public, you lose.

Admittedly, under the new US rules things are even more difficult since prior art can be invalidating for both novelty AND obviousness, but the basic principle of needing to file before someone else makes a public disclosure is the same.

So, after March 16, 2013, there’s no race to beat another inventor to the patent office but there is an imperative to file before some (academic sort?) publishes something that will destroy your right (and everybody else’s) to get a patent. But right now, before first to file, you should make a concerted effort to file (at least a provisional application) on any potentially patentable invention you’ve been working on.

If you don’t, the piece of prior art you can swear behind on March 15th will be invalidating on March 16th.

Comments Comments Off on Why file first before first to file

It’s one of those “evergreen” local TV news segments. You’ve heard it many times: “People/fans/devotees starting lining up at 6AM today to be among the first to buy… the new iPhone/Red Sox tickets/the latest version of Grand Theft Auto”. Luckily for inventors, getting priority for your patent application doesn’t involve camping outside the patent office until the examiner first opens your file – not many of us have two or three years to kill. In fact, under the still current “first to invent” law we don’t have to worry about being first in line at the patent office (although it never hurts!)

However, as we all know, the rules have changed and more changes – “first to file” in particular – are coming soon. A few weeks ago I got an email from a client. He wrote:

“We having something that we would like to patent. What are the guidelines now with the new patent law on how long can you wait to do the application?

I told him that nothing in the new law changes how long you CAN wait before filing. Currently you CAN wait indefinitely to file but it there is a risk you might lose out to a later inventor when the patent office determines you could have filed earlier.

What will change after March of next year is that the risk of losing to the later inventor becomes a certainty. First To File means that if you don’t file “now” and some other person later independently invents the same invention and files before you do, he or she definitely gets the patent.

Of course, under current or new rules, you only lose your right to the patent if there is a second, independent inventor. The longer you wait to file, the greater the risk of losing the patent to another inventor. Under “first to invent” you might lose it for holding your invention back while the other inventor was willing to share. Under “first to file” you were simply too late getting in line at the box office… uh, patent office.

My advice for now and after next March is to file at least a provisional application as soon as you practically can. Make sure you have a place in the ticket line. If you are pretty sure that no one else is working on the same invention, you can periodically re-file the same application provisionally, thereby pushing back the deadline for converting to a regular application. It’s like letting people who don’t want the same seats as you do go in front of you in line.

Comments Comments Off on Holding Your Place In Line

Quick – look behind you – run!!!

Everybody’s been warning you to watch out for “first-to-file” ( FTF) but you should be more worried about “Post-Grant Review” (PGR). Conceptually, PGR is a good way to improve patent quality. It gives third parties (not the PTO or patent holder) the chance to present evidence that the patent should not have been issued (e.g., was already in the public domain, is obvious, etc) during a defined time window AFTER the patent has been issued.

I pointed out last month, I don’t think small entities are necessarily at a disadvantage under FTF and even if I’m wrong, the only time where there is a head-to-head foot race to the patent office is near simultaneous invention – when’s the last time you were part of an interference procedure?

PGR, if enacted here, would be similar to European “opposition” procedures. In both procedures people who don’t like your ISSUED patent can submit evidence that the patent should not have issued, at a cost much lower than going to court. For a large entity this cost is much more bearable than for a small entity and allows the large entity to force costs onto the small entity after the small entity has showed its cards (and spent its budget) during prosecution.

The large entity’s capability and inclination to try to crush smaller but annoying competitors post-grant was demonstrated to me when I was Vice-President of R&D at a small entity. Our main competitor, against whom we had been making progress, was a German multi-national. Not only did they file an opposition to our European patents but, when the written opinion came out in our favor, requested an oral hearing on the matter. Cost-wise this was actually a triple whammy for us since our patent attorney had to engage their European counterparts to represent us in the European actions.

Luckily we had the resources to fight (and win); otherwise we would have had to allow our European patents to go by the boards, having already spent considerably to get them issued.

Your best defense against getting stepped on is a good offense. Do your homework (prior art search) before you  file your application. Read and re-read your patent application before filing to make sure there are no potentially invalidating errors (like lack of a full written description or enabling description). Be careful about prematurely disclosing your invention specifics – particularly while courting that all-important first customer.

And if PGR doesn’t happen? Well, the above advice is the best way to make sure your patent remains valid if and when you ever need to enforce it or use it for licensing income.

Comments Comments Off on Will You Be Crushed Like A Bug?

Last week the CAFC decided that 3 of 4 rules changes that had been on hold since last October are merely procedural rules and are therefor within the purview of the PTO.

For those of us with short memories – last year the PTO set forth 4 new rules dealing with continuation applications and the number of claims that may be submitted under current procedures. The PTO was enjoined from putting the rules into action by the District Court, which questioned whether the rules were substantive or just procedural.

Last week’s decision sends 3 of the 4 rules back to District Court for trial, assuming the new administration wants to keep pushing them. The three rules in question are:

  • Final Rule 114, which limits the Applicant to one Request for Continued Examination per patent application family. That is, when you have a string of continuation applications you can’t try to overcome a final rejection on each one. At some point final means final within the regular examination process.
  • Final Rule 75, which limits a normal application to five independent claims or twenty-five total claims per application. Applicants who wish to file additional claims must submit an Examination Support Document (ESD).
  • Final Rule 265 sets forth the ESD requirements. The Applicant is required to perform a prior art search and submit a summary of the search results with an explanation of how the independent claims are patentable over the prior art.

 If I were a betting man I’d guess that rule 114 and rule 75 make it though trial, but rule 265 fails (at least as currently written). Rule 114 is a change in procedure – you have to move on from dealing with the examiner sooner – as is rule 75 – it says you have to provide the examiner with additional material to make his or her job easier if you submit a lot of claims.

But rule 265, which requires you to perform a prior art search, is asking you to do something that you, an inventor, may not be capable of and further requires that you analyze your claims versus the prior art, something you are explicitly unqualified for (patent attorneys and judges spend hours in court doing claim construction and analysis). Rule 265 is not just a change of procedure (the steps to get a patent) but is a clear change in what is required of you to submit a patent.


Comments Comments Off on Patent Geek Alert – PTO rules back in play