Author Archives: Gerald E. Helget
As you may know, the America Invents Act (AIA) has key amendments to the patent law effective March 16, 2013 that will convert our patent system to a “first inventor to file” system for granting priority to patents as opposed to our current system of “first to invent”. This means starting March 16, 2013 there will be many inventors and their companies who will race to the Patent Office to be first to file.
In order to ensure upcoming patent applications fall within the existing rules granting priority to the first to invent and avoid triggering the new rules granting priority to the first inventor to file, many patent applications will have to be filed before March 15, 2013. Over the next three months, the Patent Office expects to be overwhelmed with new patent applications.
On and after March 16, 2013, this means that it will be important to file your patent applications at the earliest practical date so that others do not file before you on the same invention. In other words, if someone else files a patent application on your invention before your filing date, you may lose rights to your invention. Because of Patent Office confidentiality (the first 18 months from filing date), no one will be able to monitor the Patent Office filings to check whether someone else has filed before you.
Clients who take an active role in IP risk management ask me from time to time about the “dos and don’ts” of patent prosecution. Here’s an example of what can go wrong.
Suppose a U.S. consumer products company had a U.S. patented product. The product was designed, tested and manufactured in China. The patent application was filed in the U.S. about 11 months after U.S. sales began. Our U.S. law gives patent applicants up to a year in which to file a patent application. Ten years later the company sought to enforce its patent rights against a competitor only to find its patent was invalid because the company’s Chinese manufacturer immediately filed for a Chinese patent that was swiftly granted and public more than a year before the company’s patent application date. This made the Chinese patent (the nightmare) a prior invalidating publication against the company’s patent.