There have been some drastic changes recently in patent law that all inventors need to be aware of. The America Invents Act, which was signed into law on September 16, 2011, affects any patent that was filed on, or after, March 16, 2013. One of the main changes is that all patents claims, filed on, or after, the 16th of March, 2013 will be granted based on who was first-to-file (FTF) for the patent claim rather than who was the first to invent the invention.
Prior to March 16, 2013, the US Patent and Trademark Office used the first-to-invent (FTI) system to determine who was given rights to a particular patent claim. Only two other countries, Canada and the Philippines also used a similar system. Now all three countries have adopted a first-to-file patent system.
It is important to note that the first-to-invent patent system still applies to any patent application that was made filed prior to March 16, 2103. With the first-to-invent system, an inventor can potentially have their patent claims overturned if it’s discovered that another inventor came up with the invention at an earlier date.
Description of the first-to-invent (FTI) system that pertains to patents filed before March 16, 2013.
Since the first-to-invent system still applies to some US patents, I will describe it in more detail. In the United States, the US Patent Office views creation of an invention as occurring in two steps. The first step involves the conception of the invention. The date when an inventor first conceives of the invention is an extremely important date in a first-to-invent system. This is the date that establishes who has the right to any claims regarding the invention.
According to the US Patent Office, the second step in creating an invention is called reduction to practice. You acquire reduction to practice on the date you produce the “embodiment of the invention.” This is achieved one of two ways. One way is by providing physical evidence that your invention performs as intended. This is called “actual reduction to practice.” You demonstrate actual reduction to practice for an invention that is a device by providing a working prototype. If your invention is a method, an actual reduction to practice would be confirmed by research results. If, on the other hand, your invention involves composition of new matter as a result of a chemical reaction or by mixing ingredients, you can prove actual reduction to practice by creating the intended composition.
The US Patent and Trademark Office does not necessarily require you to have a prototype or research results in order to achieve embodiment of the invention. An alternative to an actual reduction to practice is called a “constructive reduction to practice.” This is achieved by filing a patent application that describes in detail the purpose of the invention, how it works, and how it’s made.
In a FTI patent system, reduction to practice of your invention is also an important factor that determines if you will be granted rights to your patent claims. When an inventor conceives of an invention, they are required to diligently reduce the invention to practice. This means that you can’t just come up with an idea and shelf it for a later time. If you do, you can lose your rights to the invention. To maintain your standing for being granted a patent claim, you need to demonstrate that you have actively been working on either an actual or constructive reduction of your invention to practice.
With the FTI system, if you are the first person that files a patent application for a particular invention, it will be assumed by the US Patent Office that you will be granted the rights claimed in your patent. So far, you’ve probably spent over $30,000 on your patent application, and you’re busily making plans to manufacture and market your new invention. Unfortunately, out of the blue, another inventor also files for a patent application for the same invention. All of a sudden, you discover that you could lose the rights to your patent claims. Your business plans could potentially go up in smoke.
When another person files a patent similar to yours, they can ask the Patent Office to hold an “interference proceeding.” At this hearing evidence is presented, and a judge determines who has the rights to the patent claims. These deliberations can be very costly to litigate and can put your business plans in limbo for a very long time. It was these types of problems that motivated lawmakers to switch to a first-to-file patent system. The other reason was to get our patent system in sync with the rest of the world.
Description of the first-to-file (FTF) system that pertains to patents filed after March 16, 2013.
With the first-to-file patent system, the first inventor to file a patent application is entitled to the patent. Under the new law,other parties can challenge the validity of your recently-issued patent by requesting a post-grant review of your patent. This request must be made within nine months of the issuance of your patent. Only rarely does the Patent Office rule that an existing patent is invalid.
Under the new law, you need to be very careful about not disclosing your invention to the public prior to filing your patent application. You can lose your patent rights if you fail to file for a patent within one year of making a public disclosure of your invention.
Another important element of this new law is how it deals with potential infringers on your patent. Under the America Invents Act, an infringer can claim a “prior commercial use” defense if they can demonstrate that they were using the invention at least one year prior to the patent filing date or one year before the invention was disclosed to the public.
One other great benefit of the America Invents Act is that it lowers the fees up to seventy-five percent for searching, filing, examining, issuing and maintaining patents for inventors that can qualify as “micro entities.” To qualify, you cannot be named as an inventor on more than 4 previously filed US patents. You, or whoever the rights to the patent are conveyed to, also can’t have a gross income that exceeds three times the median household income for the previous year. In 2013, the median household income was $51,404. As a result in 2014, the gross income requirements for qualifying as a micro entity is less than $154,212.
In summary, the America Invents Act has resulted in significant changes in patent law. The most major change has been the switch to a first-to-invent to a first-to-file patent system. This and other changes to patent law have major implications for inventors who are intending on filing a patent application to the US Patent and Trademark Office.
If you are looking for more information about patents, trademarks, copyrights and how to make money from your invention, I would urge you to check out NewBusinessCreator.com and IntellectualPropertyStore.com. These sites contain many videos and articles that provide the information inventors need to be successful.
If you need help creating a patent application, I would recommend checking out New Business Creator’s service and product providers to find a patent attorney in your area. They can be a valuable resource to help you through this complicated process. Once you acquire patent protection, you can use IntellectualPropertyStore.com to showcase your invention to invention licensing agents, product promoters and potential licensees to either sell your patent or license it.
Written by: Mark J. Krupp, Confounder of NewBusinessCreator.com