Implications of the AIA: Getting Ready for March 16, 2013

There is so much talk about the significant changes to US patent law from the America Invents Act, especially the controversial changes that go into effect on March 16, 2013. The following is a nitty-gritty rundown of the effects of the AIA and the issues that have got the patent community talking.

  • Early publication of an invention can be used as a defensive practice in the US, but doing so is a bar to obtaining patents in almost all foreign countries.
  • Relying on the personal grace period is risky especially considering the unknown interpretation of

–       experimental use, public uses and offers for sale (yours and others); and

–       the new derivation proceeding, which is also risky and costly.

  • The safest strategy is to be the first to file before any publication, offer for sale, public use beta testing by customers, or disclosure to vendors. Use lower cost provisional applications that precede any of these activities.
  • File early – you might be in a race to the USPTO under the new first inventor to file scheme.
  • File ASAP after inventions are identified and you are able to create enabling disclosure
  • You can most cost-effectively use provisional applications to add new disclosure and re-file as new inventions or improvements on the invention occur. (You can consolidate several provisional patent applications into one non-provisional application before 1 year from the filing date of the first provisional on the subject matter.)
  • It will also be essential to keep good records for derivation proceedings. These especially include inventor’s notebooks and records of any external contacts.
  • It will be critical for employers to educate employees about IP issues and to have solid agreements in place with employees that cover assignments of IP (patents in particular) to establish common ownership. Patent rights are the inventor’s, not the employer’s, unless there is a written agreement to the contrary. Relying on shop rights is a poor practice and will prevent the company from filing PCT applications as an applicant.
  • It will be critical to have joint R&D agreements between two parties (companies, universities, individuals) on a project where inventions are likely to result. Have a formal Joint Research Agreement in place before filing any patent application.
  • Consult with your patent attorney to determine if you should file before the effective date of the new statute (3/16/2013). There are certain situations where you may want to take advantage of the old patent law while they’re still in place.
  • To get the best advantage under the new patent laws, you will need tight management of your invention disclosure process internally.
  • You will need to develop an internal process for rapid decision making regarding file/no-file decisions or defensive publication of new technology.

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