First-to-File, First Strike

Prior to the America Invents Act (AIA) little could be done once an entrepreneur suffered an inadvertent disclosure of patentable subject matter.  However, the AIA provides a partial cure: make a shielding disclosure and fast.  

Under the first-to-file rules of the AIA, an inadvertent disclosure could allow a competitor to seize the disclosed material and file their own patent application. The competitor could also modify/improve upon the disclosed material thereby creating prior art against the entrepreneur.  There would seem to be nothing the rightful inventor could do to prevent this occurrence.  But, if they move quickly, the entrepreneur could shield themselves by striking first. 

That first strike could include what those familiar with the AIA refer to as a “shielding disclosure.”   Shielding disclosures are any disclosures made by an inventor for which they subsequently (within a year) file for patent protection.  Shielding disclosures become prior art against every other “inventor” (whether first to file or not) other than the one who made the shielding disclosure.  In other words, if the true inventor acts quickly, they could preempt the competitor’s application by making a deliberate disclosure of their material.

Of course, the question arises, what should be in the shielding disclosure.  Obviously, it should contain the inadvertently disclosed information.  Additionally, the shielding disclosure probably ought to contain any "obvious" variants of the disclosed material.  But that begs the question: what was inadvertently disclosed.  The answer will depend on the situation.  But, the entrepreneur should consider carefully what they include in the shielding disclosure.  Things they fail to shield might be sacrificed to the competitor.  Yet, things they shield will lose their trade secret status (if any) and will lose the ability to gain patent protection in many foreign countries. 

Clearly, inadvertent disclosures should be avoided.  Yet if you suffer one, we at the Villhard Patent Group would be happy to discuss the situation with you.  We can be reached at contact@villhardpatents.com or at (512) 897-0399.  For more information about us please see www.villhardpatents.com.  We look forward to hearing from you.

Should Entrepreneurs Monitor Their Competitors For New Patents?

Now that the America Invents Act (AIA) has kicked in completely, Entrepreneurs should consider monitoring their competitors’ (post-AIA) patent applications and patents as they “publish” and “issue” respectively. 

That is, they should do so if they want relatively inexpensive (sarcasm intended) ways to challenge their competitors’ documents.  The AIA provides entrepreneurs several procedures for challenging these legal instruments.  See our October 4, 2011 posting.  Two of these procedures come with short windows in which to catch the publication/issuance of these documents.  3^rd party citations require the challenger to act before the latler of 1) the first office action for an application or 2) its publication +6 months.  PGR (Post Grant Review) requires action within 9 months of the issuance of a patent.

In deciding whether to make a 3^rd party submission, you should consider whether to do so anonymously.  Anonymity would shield you from identifying yourself as a party potentially worried about the document.  If you want to bring your patents and (to a much lesser extent) applications to your competitor’s attention (setting up a potential case of willful infringement – against them), though, anonymity might not serve you.

PGR represents a different beast.  You cannot maintain anonymity during PGR.  You will almost certainly identify yourself as a potential infringement target, particularly if you lose.

You should also be aware that if you identify a document pertinent to your activities you might be opening yourself up to a charge of willful infringement.  But, it might be better than waiting to be sued.

Moreover, you should be aware that actually identifying a particular competitor’s documents might be hard to do.  For one thing, not every patent-related document identifies the owner.  Such factors might lead to somewhat spotty results.  But doing so with some degree of success is not impossible with skilled help. 

On that note, be aware that these procedures are legal proceedings and you will likely need the help of a Patent Attorney.  We at the Villhard Patent Group would be happy to discuss this subject and other IP (intellectual property) related matters with you.  Feel free to call us at 512-897-0399 or write us at contact@villhardpatents.com.  For more information about us see www.villhardpatents.com.

* Note: this article was co-authored with Jeff Kuo of Hulsey Intellectual Property Lawyers (see www.hulseyiplaw.com).  Jeff can be reached at jkuo.5288@gmail.com

America Invents Act (AIA) Top 10 List

For better or worse, the America Invents Act has now been fully implemented.  Accordingly, we felt it appropriate to briefly summarize some of the changes.  So, without further adieu, the top 10 changes are:

10.         You can now create a "shielding" disclosure that will operate as prior art against your competitors while still allowing you one year to file your own patent application.  But beware IP (Intellectual Property) thieves who might force you into filing an expensive derivation proceeding if they file their application first.

9.         The Patent Office and courts now consider virtually anything, anywhere, in any language that is publically available as prior art.

8.         The Patent Office will allow a patent owner to request supplemental examination of their own patent.

7.         Entrepreneurs can now pay to have the examination of their applications expedited.

6.         The Patent Office is establishing new offices outside of the D.C. area.

5.         Tighter standards for filing infringement lawsuits have partially tied the hands of patent trolls.

4.         The U.S. now allows patents and applications to be challenged with four different procedures (besides a full blown trial in federal district court).  They are: third-party prior art submissions, ex parte reexamination, inter partes review, post grant review (PGR), and PGR for covered business methods.

3.         "Micro entities" can now pay lower Patent Office fees.

2.         The one-year grace period for filing a patent application following an "offer for sale" of something incorporating a patentable idea has probably vanished.  Entrepreneurs should plan their marketing and sales activities such that no offer for sale occurs until they have at least filed a provisional patent application.

1.       The first inventor to file an application for a patentable idea will now get the patent even though someone else might have invented it first (a.k.a. "First-to-File" patenting).

In coming weeks we will be revisiting some of our earlier postings in light of these changes.  In the meantime, we at the Villhard Patent Group would be happy to discuss these changes and how they relate to your intellectual property.  Feel free to contact us at contact@villhardpatents.com or 512-897-0399 and to visit us at www.villhardpatents.com.

Keep Your Mouth Shut, Or Else: The America Invents Act (AIA) and Provisional Patent Applications

A myth seems to have already developed around the AIA.  That myth stands for the idea that an Inventor/Entrepreneur can defensively publish their ideas and subsequently file a provisional patent application covering them while relying on the “derivation” provisions of the AIA. 

Not so fast. 

The myth stems from the AIA’s provisions regarding those who “derive” their patent application from another’s public disclosures.  More particularly, the AIA sets up a tribunal to hear derivation proceedings to determine whether one applicant derived their application from some other inventor’s public disclosure of it. 

To understand the ramifications of relying on these derivation proceedings, you need to ask, what happens if someone does “derive” a subsequent patent application from your idea.  First, as always, be aware that provisional applications almost always contain holes (omissions if you will).  If one of those omissions involves some central (or lucrative) part of your idea, your provisional application will enable no coverage for you in that area. 

Worse still, if someone does derive an application from you, and their application covers your omission, under AIA ‘s first-to-file rule they can ultimately obtain the coverage while you might not.  If that is not bad enough, assume that you do have evidence of their derivation of your idea.  Even under those circumstances, you will have to launch and prevail in a “derivation” proceeding.  The other side will likely contest these proceedings.  This situation means that you will find yourself fighting a mini-trial to recover your idea at the likely cost of tens of thousands of dollars. 

A word to the wise: until you have a full-up non-provisional application on file, keep your discussions under non-disclosure agreements.  The AIA contains many traps for the unwary. 

We at the Villhard Patent Group would enjoy speaking with you about your ideas and business plans for them.  For more information write us at contact@villhardpatents.com or visit our website at www.villhardpatents.com.