New Patent Laws Will Increase The Urgency to File U.S. Patent Applications
By Attorney Darcell Walker
Houston, TX (November 28, 2012) -- In September 2011, President Obama signed the American Invents Act (AIA). As part of this act, in March 2013, the United States patent system will change from a first-to-invent (FTI) system to a first-to-file (FTF) system. The FIF system will represent a change in how the United States Patent and Trademark Office (USPTO) determines the priority of inventors for the purpose of filing a patent application for an invention. In the current FTI system, the first inventor to conceive an invention has priority rights to pursue a patent for that invention.
Even if a second inventor conceives essentially the same invention after the first inventor and files a patent application for that invention before the first inventor, the first inventor can have priority rights to pursue patent protection for the invention as long as the first inventor can prove he/she was actually the first to conceive the invention. In the new FTF system, the first inventor to file a patent application for the invention will have the priority rights to pursue patent protection for the invention regardless of who was first to actually conceive the invention.
The American Invents Act represents an important change to the United States patent laws. The AIA also puts the United States' patent system in conformity with the patent systems of other countries throughout the world. Before the AIA, the last major patent reforms to the United States patent laws occurred several decades ago. Since then, U. S. innovators have made great advances in technology resulting in products such as multi-functional cellular telephones ('smart-phones') and sophisticated communication systems such as the Internet. Even though technology has advanced, the laws protecting the technologies of today have remained in the past. Some observers believe that an out-of-date patent system is a barrier to innovation and to American inventors who are attempting to develop and commercialize products based on new ideas and establish new businesses that would create jobs.
The changes implemented through the AIA continue to generate discussions on the pros and cons of the new law, but the reality of the new law is that an inventor will need to be more diligent in filing a patent application once he/she conceives an invention. Inventors will no longer be able to rely on the date of conception to claim rights to an invention. This new law will make useless the old practice of creating a written description of an invention and mailing that document to oneself (the Poor Man's Patent) in order to establish a conception date. A person will need to be more diligent in developing an idea and filing for patent protection for the idea. Procrastination and delays will really cost people opportunities to protect their ideas.
I also believe that the AIA may cause a significant increase in the number of provisional patent application filings. A provisional patent application is a shorten and informal patent application one files in order to quickly obtain a filing date for an invention and to gain 'patent pending' status for that invention. The AIA contains several other provisions and some of these provisions became effective in September 2011. Many of these provisions affect procedural and administrative aspects of filing a patent application. The AIA is intended to make the patenting process more efficient. However, the change to a first-to-file (FTF) system will have a direct impact on the individual inventor's ability to pursue patent protection for an idea.
Attorney Darcell Walker has over 23 years of experience practicing intellectual property law (i.e. patents, copyrights, trademarks and trade secrets). He is also an author and conducts workshops and seminars on legal topics. For more information, please visit www.darcellwalker.com and www.darcellwalker.com/Intellectual_Property_Char.html.
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