First to file and patent reform in 2013

On March 16, 2013 the most significant change to patent law will come into full effect.  The Lahey-Smith America Invents Act, signed into law in 2011, represents the most significant change to the U.S. patent system since 1952.  The act, commonly referred to as Patent Reform, includes two changes that will have a significant effect on inventors, engineers, software programmers, designers, and others engaged in developing intellectual property.

First-to-File and Prior User Rights Defense are expected to cause real and meaningful changes to the way innovators go about their work including:
  • Changing innovation, R&D and NPD strategy
  • Reducing the time available for innovation
  • Increasing the cost of innovating
  • Changing which innovations will be protected
  • Eliminating many advantages of open innovation initiatives
  • Creating new competitive challenges based on your own inventions. 
First To File: The component of the law that is going to cause the most disruption is its 'first inventor to file' provision.  When the law goes into effect the US will change the definition of who has the right to be granted a patent for an invention.  The new, first to file, system grants the right of a patent for a given invention to the first person or organization to file a patent application for protection of that invention, regardless of the date of the actual invention.
Assume "Tom" conceives of a new mousetrap on April 1, 2013. Tom works diligently works to prepare a patent application, and Tom files his patent application on August 1, 2013. Assume "Jerry" conceives of the same mousetrap on May 1, 2013, and quickly files a patent application on the new mousetrap on July 1, 2013. Under the first-to-file system, Jerry is entitled to the patent on the mousetrap, because he filed the patent application for the mousetrap before Tom.
Prior User Rights: Another provision of The America Invents Act, called "Prior User Rights", affects the rights companies have to undisclosed inventions.  The prior user rights provision gives inventors the right to ongoing use of undisclosed inventions (if prior use was greater than a year), even if another entity is grated a patent for the invention (due to first to file).  However, this right is limited to the inventions prior usage, its use cannot be expanded.
An example may be a modification to a piece of manufacturing equipment that is used at a single plant.  If another inventor independently develops the same invention and is granted a patent for it, they would not be able to sue for infringement if the manufacturing plant can prove it has been using the invention for more than a year.  However, the manufacturing plant's use of the invention is limited, it cannot expand the use of the invention without infringing on the patent granted to the later inventor.  (Note: If the invention was filed by a university or technology transfer office, the manufacturing plant is not granted the protection of prior use and can be sued for patent infringement by the patent holder.)
Learn more about how Patent Reform will increase cost and time required to innovate.

How can we help?
Contact us to learn about patent reform and how first to file will effect your innovation processes.

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