Deadline approaches for patent protections

February 12, 2013

John R. Van Amsterdam PhD

(as published in the Boston Business Journal)

The Leahy-Smith America Invents Act represents the most significant reform to the United States patent system in nearly 50 years.

On March 16, the current law of “first to invent” will be replaced by the new law of “first inventor to file.” The new laws will affect companies from Big Pharma to software and computer electronics makers to independent entrepreneurs.

The change from “first to invent” to “first inventor to file” will apply to all patent applications filed on or after March 16, 2013.

In a nutshell, under the new law, if you are the first inventor to file an application with the patent office, you win. If you lose the race, you will likely lose the chance to patent the full scope of your invention.

If you file your application before March 16, the old law applies. If you file your application on or after March 16, or if a pre-March 16 application is later amended to include even one claim that is not supported by the application as filed before March 16, the new law applies.

You should also make the following considerations:

  • Under the new law, prior art can include any public disclosure, anywhere in the world, in any language, made prior to the filing of an application.
  • Under the new law, limited exceptions are still available for certain disclosures occurring one year or less before the filing date of a patent application. For example, a disclosure by the inventor, will not be prior art. However, likely only the exact disclosure will be exempt, limiting the scope that can be pursued in a subsequent patent application.
  • The balance between keeping an underlying technology of a commercial process/product as a trade secret and obtaining patent protection will shift. Under the new law, a company with a trade secret on a process/product used or manufactured in the U.S. can rely on an expanded prior-use defense if later sued for patent infringement, provided it used the trade secret in commerce for more than one year.