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Special Feature: Final Alert --- The New Patent Era Begins March 16, 2013

Wednesday, February 27, 2013

By Steven J. Hultquist of Hultquist IP

For over 200 years the American patent system has rewarded the first inventor – the first person or persons to make an invention. If a person conceived an invention and subsequently worked diligently to perfect it, either physically or by filing a patent application, then that person would prevail over someone who later had the same idea but who perfected it before the person who was first with the concept.

This system permitted the person first conceiving the invention who got to the Patent Office with the patent application more slowly than a competitor – because of testing the concept more broadly, or more rigorously with tests requiring more time to complete, or because of writing a longer patent application – to nonetheless prevail, provided that they were diligent in their efforts to perfect the invention specified in their patent application.

That system changes March 16, 2013, under the provisions of the America Invents Act (AIA) coming into effect on that date.

For new invention patent applications filed on and after that date, the inventor who prevails is simply the one who files their patent application first, regardless of who had the idea first.

It is, simply stated, a race to the Patent Office.

Changes in the Prior Art Universe

The new system starting March 16, 2013 eliminates various restrictions previously applied to “prior art” – the state of the art against which an invention is judged to determine whether it meets requirements of novelty and non-obviousness.

Under the new system, anything available to the public anywhere in the world prior to the time of filing a patent application will be prior art. There is an exception for public disclosures deriving from the inventor that are made within one year of the U.S. patent application filing date, but such pre-filing disclosures will still have the result of preventing patents from being obtained in many foreign countries.

Further, any published U.S. or international (PCT) patent applications are prior art as of their foreign priority date, thereby abolishing the so-called Hilmer doctrine that limited such applications to being prior art only as of their U.S. or PCT filing date.

Which Law Applies?

For U.S. patent applications filed after March 16, 2013 and claiming priority to a previous U.S. application filed before March 16, 2013, the effective date applicable to the claims will determine whether the application is processed under the “old law” prior art/first to invent provisions or whether the new AIA prior art/first to file provisions will govern the proceedings.

The U.S. Patent and Trademark Office published rules and guidelines on February 14, 2013 addressing this determination, according to which a patent application disclosing and claiming only subject matter that was properly enabled and supported in a priority application filed before March 16, 2013 will be governed by the old law.

If, however, the patent application filed after March 16, 2013 and claiming priority to a previous U.S. application filed before March 16, 2013 contains, at any time during its processing, a claim having an effective date on or after March 16, 2013, then a statement to such effect must be made by the applicant, and the entire application is governed by the new law, even if the post-March 16, 2013 claims are subsequently cancelled.

Taking Action Before March 16, 2013, and Thereafter

Based on the foregoing, it is desirable to obtain the benefits of the old law, by filing any new patent applications before March 16, 2013, and in any applications filed after such date that claim priority to application(s) filed prior to such date, claims should be restricted to subject matter that is properly enabled and supported in the priority application(s) filed prior to March 16, 2013.

After March 16, 2013, every new invention faces a “race to the Patent Office” in relation to competitors pursuing the same or related technology, and the continual growth of prior art arising from new products, publications, and activities around the globe.

In this new world, time will be of critical essence in establishing patent positions. This fact should be borne in mind in designing experiments, testing prototypes, conducting development efforts, assessing commercial viability, and carrying out other actions that may precede patent filings, so that resources are efficiently deployed to facilitate quick filing.

Filing of provisional, as opposed to non-provisional, U.S. patent applications may be warranted where there is a high likelihood that an invention will undergo significant modification as it is refined and productized for commercialization during the year following initial patent application filing. Successive provisional filings then can be made during the one year period, to capture successive modifications at the earliest possible time, and ultimately all provisional application priorities can be claimed in the subsequent non-provisional application that is filed at or before the anniversary of the first provisional application filing date.

If there is a high probability that a number of related innovations will be generated in an R&D program, it may be advantageous to prepare templated shell documents for patent applications that can be quickly filed after “drop-in” of empirical procedures and results, with summary description and claims.

The task of patent counsel is correspondingly impacted. There is a need for the patent attorney to rapidly take an inventive concept and inductively broaden it out, hypothesize extensions, extrapolations, and alternative applications and embodiments, and competitively capture the broad scope of the invention, with fall-back positions against unknown prior art that may surface in the future, in the patent application that is rushed electronically to the Patent Office. There will be more “fire drill” patent filings in the post-March 16, 2013 world, with the unchanging goal of maximizing the patent position in each instance.

In consequence of the “world-wide public availability” standard for prior art under the AIA provisions coming into effect on March 16, 2013, correspondingly broader information searches will also be necessary to assess patentability in the first instance.

Since (i) public use and public sales outside the U.S. have been added to the scope of prior art, (ii) published U.S. and PCT applications will now have prior art effect as of foreign priority dates, and (iii) publication of patent applications 18 months after filing continues to be the global norm (rendering inaccessible the knowledge of “what’s in the patent pipeline” before such publication), the scope of the post-March 16, 2013 prior art inquiry is large and will grow continually larger.

In such an expanded prior art universe, information concerning current world-wide activity and developments, in sources such as trade magazines, corporate and academic newsletters, promotional brochures, sales literature, online clinical trials databases, research bulletins, information releases, industry white papers, competitive intelligence, research grant requests for proposals (RFPs), podcasts, etc., assume larger importance, as potential reservoirs of applicable prior art.

Organizational response to such expansion of prior art is properly addressed by generating awareness of the challenge, so that technologists are sensitive to the critical task of continually gathering and communicating current information from the journals they read and technical meetings they attend, sales representatives are sensitized to the need to constantly seek and report on competitive developments and products of which they become aware, and managers are mobilized to ensure proper travel of such information in the organization.

In the post-March 16, 2013 patent world, the race will go to the swift, and while speed alone will not be determinative of ultimate success in every instance, it will be a key element of the increasingly competitive proprietary landscape.

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