Monday, September 26, 2011

Patent Reform: First To File Effective March 16, 2013

Patent Reform arrived as law on September 16, 2011.  The good news is that the Patent Office will soon have a “micro” entity fee structure which will allow many entrepreneurs a 75% reduction in their Patent Office related fees.  However, the new law also transforms the U.S. into a first-to-file patenting country.

While we have bemoaned the negative impact such a change will have on entrepreneurs, it will become fact on March 16, 2013 and entrepreneurs will need to adjust.  Briefly, the first-to-file provisions set up a race to the Patent Office for inventors of new technology.  This result is especially so for technologies in which many companies are pursuing solutions.  Software, Internet, and Web-based solutions can often be described in that manner.  Clean energy plays and other environment friendly products and services also frequently have multiple companies working independently toward some goal.

As a result, when first-to-file begins on March 16, 2013, entrepreneurs should seriously consider filing provisional patent applications covering ideas which they believe might come to be worth protecting.  In other words, to avoid having someone else file provisional applications for the same (or a similar) ideas, entrepreneurs will need to act earlier than they would have under the current first-to-invent law.

Then, given the shortcomings of most provisional applications, entrepreneurs should consider following up quickly with non-provisional applications.  In this way, holes in the provisional application can be identified and filled in, limiting statements mitigated, and the ideas fleshed out .  Otherwise, in the interim, other filers might plug those holes with provisional applications of their own.  While the law still allows one year to convert provisional application to non-provisional applications, entrepreneurs should consider whether they want to leave their ideas to the mercy of their provisional applications for that full year.

We at the Villhard Patent Group would be happy to discuss these issues with you.  For more information about us please see or call us at (512) 897-0399.

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