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 www.villhardpatents.com or call us at (512) 897-0399.

What Makes an Idea Likely to Click?

Often an entrepreneur concludes that their once-brilliant idea is unpatentable and they let it wither on the vine.  Yet a patent attorney (if they had been consulted) might have thought the idea would click at least to the extent that the likely claims would have had good breadth.  To understand such tragedies, remember that patentable ideas must relate to patent eligible subject matter and be useful, new, and non-obvious. 

Even seasoned patent attorneys cannot positively determine whether an idea is non-obvious.  Instead, they speak of the likely breadth of claims directed toward the idea. To begin their obviousness analysis, many attorneys look for a piece of the idea that to their knowledge no other approach has included (e.g., a handle for a widget when no other widgets have handles).  If the idea passes this test, the likely breadth of the claims increases.

Moreover, if the idea runs contrary to current approaches, the likely breadth increases.  Conventional approaches to an issue, in contrast, narrow the likely claim coverage.  Indeed, substituting one known approach for another lowers the likely claim breadth.  However, if the idea delivers benefits not foreseeable to those in the industry, then the likely breadth increases.  Repeated failure of competitors to implement the idea and their skepticism about it also point toward likely broader claims.  Likewise, praise from, or adoption of the idea by, industry points to broader claim coverage.  The foregoing discussion, of course, assumes that neither a public disclosure nor an offer for sale involving the idea destroyed its patentability prior to the entrepreneur’s patent application.

While the above list neither pretends to be exhaustive nor definitive, the author hopes that it provides some guidance for entrepreneurs as to what makes an idea click with a patent attorney.  But, as with any legal issue, professional guidance is advised.  For more information about patents and the patenting process, please contact us at www.villhardpatents.com or call us at (512) 897-0399.