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.

Get In Line Now to File Provisional Applications

As we warned in our last posting, it is now time to seriously consider shifting strategies and begin filing provisional applications shortly after realizing that an idea might have commercial potential.

On March 16, 2013 the new first-to-file patent system begins in the U.S.  That means whoever files an application first (be it a provisional or non-provisional application) will be entitled to the patent even if they invented it after you.  There are exceptions of course.  For instance, if they stole the idea from you ("derived" it from you), theoretically, you can prevent them from obtaining the patent.  But, proving that will likely require lengthy and expensive legal proceedings.  Instead of suffering that fate, file a provisional application and follow it up with a regular non-provisional application with reasonable promptness (a few months should suffice for most situations).  

We also have noted that Patent Attorneys and the Patent Office web servers will likely be quite busy in March.  This might result in heavy traffic on these servers resulting in an inability (or delays) for your Attorney to file your application then.  Accordingly, we suggest that now is the time to act.  True, you'll be committing to filing an application a bit earlier than the new law requires.  But you will also be managing the risk of not being the first to file in a more prudent fashion.  

If you would like more information about provisional applications, the new first-to-file system, or us, we at the Villhard Patent Group would be happy to speak with you.  You can reach us at contact@villhardpatens.com or (512) 897-0399.  Our website is at www.villhardpatents.com.

Reminder: Patent Reform: First To File Effective March 16, 2013

As many of you know, the U.S. patent system becomes a first-to-file system effective March 16, 2013.  Briefly, from that time forward it will generally be advisable to file a provisional patent application as soon as you recognize that an idea might have commercial potential.  Then, within a few months it will also usually be a good idea to follow up that filing with a regular, non-provisional patent application.  

Indeed, now that the effective date of that provision of the America Invents Act approaches, we at the Villhard Patent Group now generally recommend beginning to use that strategy even now.  For one thing, we believe that a rush to file provisional applications might occur in the weeks leading up to March 16.  That means that Patent Attorneys and their firms are probably going to be quite busy in February and March.  In addition, the Patent Office's website and electronic filing system might, just might, be overwhelmed with traffic.  The resulting possible denial-of-service-like event might frustrate your plans for timely filing a provisional application.

Also, with the new strategy of following the provisional with a non-provisional application in a timely manner, Patent Attorneys are likely to find themselves busy following the March change.

If you would like to discuss your particular situation to see if the new strategy fits your circumstances, we at the Villhard Patent Group would be happy to speak with you.  You can contact us at (512) 897-0399 or you can visit us at www.villhardpatents.com for more information.