America Invents: Immediate Changes to Patent Law Start Today

On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act and, with his signature, which will marshal in major changes to the U.S. patent system. Many provisions of the Act take effect a year or more after this date including, e.g., procedures for post-grant review proceedings before the U.S. Patent and Trademark Office (after September 16, 2012) and a change to a first inventor to file system (after March 16, 2013). However, a number of changes will take effect on September 16, 2011, or soon thereafter.

The immediate and nearly immediate changes are as follows:

USPTO Patent Fees

  • A 75% reduction in fees for a new category of patent applicants termed “micro entities,” defined under new section 35 U.S.C. § 123, will take effect on September 16, 2011. See Sections 10(b) and (i)(1) of H.R. 1249.
  • A 15% surcharge will apply to general statutory fees and maintenance fees under 35 U.S.C. §§ 41(a), (b), (d)(1), and 132(b) and will take effect on September 26, 2011. See Section 11(i) of H.R. 1249.
  • An option for “Prioritized Examination,” which has an associated $4800 fee (reduced by 50% for small entities) in addition to general statutory fees, will take effect on September 26, 2011. See Section 11(h) of H.R. 1249.
  • An additional $400 fee (reduced by 50% for small entities) will apply to all applications not electronically filed and will take effect on November 15, 2011. See Section 10(h) of H.R. 1249.

Proceedings Before the USPTO

  • A limitation on the issuance of claims directed to or encompassing a human organism will apply to any application pending on, or filed on or after, September 16, 2011. This limitation, however, does not affect the validity of any patent issued prior to enactment. See Section 33 of H.R. 1249.
  • Any tax strategies for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of invention or the filing of a patent application, will be deemed in the prior art with respect to any patent application pending on, or filed on or after, September 16, 2011, or to any patent issued on or after this date. The provision expressly excludes tax preparation inventions. See Section 14 of H.R. 1249.
  • The date of receipt of FDA permission for commercial marketing or use of a product, which is based on the submission of an application for patent term extension under 35 U.S.C. § 156, will be considered the next business day if transmitted after 4:30 PM Eastern Time or on a non-business day. This change applies to any term extension application pending on or filed after September 16, 2011. See Section 37 of H.R. 1249.
  • A mandate for the USPTO to work with and support intellectual property law associations in the establishment of pro bono programs to assist financially under-resourced independent inventors and small businesses will take effect on September 16, 2011. See Section 32 of H.R. 1249.

Reexaminations Before the USPTO

  • The standard for the Director to grant an inter partes reexamination will change on September 16, 2011 from the current standard requiring a requestor to show a “substantial new question of patentability” to a new standard requiring a requestor to show “that there is a reasonable likelihood that the requestor would prevail with respect to at least 1 of the claims challenged in the request.” See Sections 6(c)(3)(A) and (B) of H.R. 1249.
  • Review of ex parte reexamination decisions will be limited to the Court of Appeals for the Federal Circuit after September 16, 2011, removing the option for review before the United States District Court for the District of Columbia under 35 U.S.C. § 145. This change applies to any reexamination pending on, or brought on or after, September 16, 2011. See Sections 6(h)(2)(A) and (B) of H.R. 1249.

Litigation Before the Courts

  • Failure to disclose best mode under 35 U.S.C. § 282 will no longer be available as a defense to actions commenced on or after September 16, 2011. See Sections 15(a) and (c) of H.R. 1249.
  • A revised defense to infringement under 35 U.S.C. § 273 based on prior commercial use applies to any patent issued on or after September 16, 2011. See Sections 5 (a) and (c) of H.R. 1249.
  • Venue for any action commenced on or after September 16, 2011, that relies on 35 U.S.C. §§ 32, 145, 146, 154(b)(4)(A), or 293 or 15 U.S.C. § 1071(b)(4) will change to the United States District Court for the Eastern District of Virginia from the United States District Court for the District of Columbia. See Section 9 of H.R. 1249.
  • Joinder of unrelated accused infringers will be limited in actions commenced on or after September 16, 2011, under new section 35 U.S.C. § 299. See Section 19(d) of H.R. 1249.
  • Changes to the false marking provisions of 35 U.S.C. § 287 will allow for virtual marking and of 35 U.S.C. § 292 will limit standing to the U.S. (for civil penalty) or a person who has suffered a competitive injury based on false marking (for civil damages) and remove as false marking the later expiration of a patent on a previously-marked product. These changes apply to any action pending on, or commenced on or after, September 16, 2011. See Sections 16(a) and (b) of H.R. 1249.

The Author

Eldora Ellison & Jeremiah Frueauf

Eldora Ellison & Jeremiah Frueauf

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 44 Comments comments.

  1. Mark Nowotarski September 16, 2011 5:36 pm

    Thanks for the quick summary.

  2. EG September 16, 2011 6:06 pm

    “?A 75% reduction in fees for a new category of patent applicants termed “micro entities,” defined under new section 35 U.S.C. § 123, will take effect on September 16, 2011. See Sections 10(b) and (i)(1) of H.R. 1249”

    That’s not correct. The microentity discount takes effect after Kappos exercises his fee setting authority under Section 10(a) which likely won’t happen for several months. Read Section 10(b) carefully: it says the “fees set in under subsection (a) [i.e., under Section 10(a) pursuant to Director Kappos fee setting authority]” are reduced by the small entity or microentity discount. That has no impact on the automatic 15% fee surcharge which will occur in 10 days under Section 11(1) and which won’t be “terminated” until Kappos exercises his fee setting authority under Section 10(a), which point the small entity/microentity discounts take effect.

  3. EG September 16, 2011 6:13 pm

    Sorry, Section 10(b) actually says (in relevant part): “The fees set or adjusted under subsection (a)” which, again, won’t happen and won’t “terminate” the 15% fee surcharge until Kappos exercises his fee setting authority under Section 10(a), at which point the small entity/microentity discounts of Section 10(b) will then take effect.

  4. Stan E. Delo September 17, 2011 9:24 am

    I think the micro entity provision of H.R. 1249 is about the only part of this bill that I like. With that, a formal application will only cost about $100 more than a PPA, which will help independents to file a little more often. That is until they reach their limit for application filings, whereupon they magically turn into small entities. Thanks for the information and providing a link to the text of the bill on the page you linked us to. The bill can be found @ http://www.gpo.gov/fdsys/pkg/BILLS-112hr1249enr/pdf/BILLS-112hr1249enr.pdf

    Stan~

  5. Mark Nowotarski September 17, 2011 10:30 am

    I agree on the importance of the micro entity fee to independent inventors and start ups. This will be covered in a talk I’m giving to the CT Inventors Association on 9/29. Details here: http://bit.ly/patreform

  6. Blind Dogma September 17, 2011 10:45 am

    Stan,

    You have hit upon another landmine in the new law’s provisions.

    The exit from micro-entity status based purely on the number of submissions (not more than four submissions is ludicrous) is antithetical to the purpose of the Constitutional mandate.

    You are in a very real sense punishing those who seek to “promote the Progress of Science and useful Arts.”

    Linking entity size to prolific inventiveness is the height of arbitrary and capricious rule making. I look forward to yet another Constitutioanl Battle related to this new law.

  7. Stan E. Delo September 17, 2011 1:20 pm

    Mark-
    That certainly is very generous of you, and I wish i could be there. I ran the Northwest Inventors Guild here in Port Townsend for about three years, and we had a few attorneys and agents give a number of presentations, which was wonderful. It seemed to make things a lot more real for the members, and helped to get them moving, if you know what I mean. You probably know my Pal Asija, who was my attorney for a little while. If you see him, tell him hello for me, and that I really appreciate everything he did for me!

    Stan~

  8. Stan E. Delo September 17, 2011 3:13 pm

    BD-
    Those are pretty close to my thoughts in the matter as well. I suppose they think the inventors will become rich after applying for a patent 4 times, but in reality most first time applicants will be very lucky to even get a patent awarded, let alone knowing what to do with if they actually get. one.

    The FTF provision is the major Constitutional issue in this legislation as far as I am concerned. The Constitution talks about rewarding inventors for their efforts by granting them exclusivity for a Limited time. Nowhere is there any mention of the First to File concept, and I really believe our founding fathers would take umbrage at if outright offense to the whole idea. If they want to change the wording of the Constitution, 1249 might be kosher, but it would require a Constitutional amendment to make the bill arguably even Legal. The FTF concept is so deeply entwined into this bill, that the whole thing would collapse like a very large and very expensive House of Cards if a challenge were successful.

    I think that would be the ultimate irony after all.

    Stan~

  9. Stan E. Delo September 17, 2011 7:01 pm

    I meant to write:
    “I really believe our founding fathers would take umbrage at, if not outright offense at the whole idea of awarding patents to the *first to file*”

    Stan~

  10. Blind Dogma September 18, 2011 8:58 am

    Stan,

    As I believe that independent invention can happen, I am not as upset about the FTF provision on a Constitutional basis as the abundant sell-outs that this law has. For our leaders to continually sell this bill as creating jobs or streamlining the process, it is downright insulting to anyone who understands what that process entails.

    Back to studying the new law…

  11. Stan E. Delo September 18, 2011 2:35 pm

    BD-
    FTF per se is not the real problem by itself, as Gene has clearly pointed out several times before that we have effectively Had a *virtual* FTF before now. The main problem that it will cause as far as I am concerned is that it *virtually* destroys the one year grace period here in the US the way the bill is written, which is major problem for independents especially. We will be forced to rely on secrecy and the use of NDA’s of questionable reliability. An NDA is only as good as the ethics of the person who signs it, and they now have even fewer reasons to even consider signing one in the first place.

    Prost!
    Stan~

  12. Blind Dogma September 18, 2011 4:29 pm

    Stan,

    Agreed.

    Combine also the illusion of the grace period (I might as well weigh in on the new 102(b)(1)(B), in which independent invention is not covered) the very real (and massive) problem of extending prior user rights, and you end up with a more costly, less beneficial and far more risky patent system than you had before this “improvement.”

    Sometimes the “friends” that want to improve you are the worst type of enemies.

  13. Stan E. Delo September 18, 2011 7:48 pm

    BD-
    I think I just *invented* a new concoction of kool-aid specifically for independent inventors today. I am thinking of calling it Ethereal Eucalyptus. The trick here will be to substitute *carbonation* (IE pressurized Carbon Dioxide) with less highly pressurized Ether, which will tend to reduce packaging costs in comparison to carbonated products . The pressurized packaging will add a bit of cost of course, as opposed to just sending a dry mix that only needs water to be added, but perhaps in this case the added expense might be warranted.

    According to my current calculations, the ether should boil off in about 5 minutes, but folks will have to be a bit careful if they happen to be smokers. The menthol effect of the Eucalyptus should be somewhat soothing, and the ether will make them not care too much about Patent Reform anyways

    Skoal,
    Stan~.

  14. step back September 19, 2011 7:49 am

    “Back to studying the new law…”

    BD,

    That’s what I’m trying to do as well, but am having a hard time figuring out what the new game is going to be.

    In one sense we will have a year to figure out the new game.

    But in another sense, the strategy planning for filing divisionals, CIPs has to start right now because we have to correctly advise clients of what rights they will have or lose in the future.

  15. Stan E. Delo September 19, 2011 2:50 pm

    Step-

    One strategy I heard of during the Wolf Greenfield presentation if I recall it correctly is to file overlapping PPA’s until things become a little clearer, and then pull the trigger on the Formal when you are reasonably sure that you have everything adequately covered, and one filed just before the FTF pumpkin date of Sept. 16, 2012. That will keep everyone guessing for up to 2 years, but if I were to do that, I personally would include the evolving claims while keeping an eye on the competition, and write the PPA’s just like a formal app of course. http://event.on24.com/view/presentation/flash/EventConsoleMVC.html?titlecolor=000000&eventid=356193&sessionid=1&username=&partnerref=&format=fhaudio&mobile=false&flashsupportedmobiledevice=false&helpcenter=false&key=E14F988DF919F63A8926AE9E55394CBB&text_language_id=en&playerwidth=980&playerheight=650&eventuserid=54173024&contenttype=A&mediametricsessionid=45004821&mediametricid=764350&usercd=54173024&mode=launch#

    Cheers,
    Stan~

  16. step back September 19, 2011 3:39 pm

    Stan,

    Thank you for taking my point of concern seriously.

    I’ve been going over the new section 100(i)(1)(A)/(B) over and over again.

    In so far as I can make out, if you do not need to file a continuation or divisional, then the “actual” filing date of the one application that you filed becomes the “effective filing date” of your issued claims.

    On the other hand, if you do end up filing divisionals or continuations, then you have to figure out which of you applications was the earliest one “containing” a claim “to THE invention” (a.k.a. “such invention” in paragraph (B))

    Note that reference to the “contained” requirement also appears in new section 100(i)(2)

    Thanks for realizing this is not a time to be thinking about Kool Aid but instead a time to focus one’s mind on some serious concerns.

  17. Stan E. Delo September 19, 2011 4:15 pm

    Step-
    I think my frivolity is not really in order in this thread, but just a way to try to lighten things up a bit out of nervousness about my future I suppose. I certainly very much appreciate your and BD’s efforts to make some sense out of this new legislation and letting us all know about what you discover along the way. It will help me and others to look in relevant directions to see what we can discover about the new law and how to deal with it. I am having some difficulty understanding what they are saying, with all of the add on *edits* at the end of the bill. Why couldn’t they have just edited it properly in the first place?

    Best regards,
    Stan~

  18. EG September 20, 2011 8:13 am

    I take back my comment above about the microentity not being effective on September 16; it is by virtue of Section 10(i). But what I find puzzling is, with regard to both the small entity and microentity discount, how does the 15% fee surcharge work: (1) is this surcharge based on the reduced fee, i.e., after taking the small entity/microentity discount?; or (2) is this surcharge based on the unreduced fee, i.e., before taking the small entity/microentity discount? My reading of Section 11(i)(1)(A) is that it is the latter, before the base fee is reduced by the small entity/microentity discount. Anyone else have a differing view, and if so, why?

  19. EG September 20, 2011 8:45 am

    Well, I was right that the microentity discount won’t actually take effect until Kappos exercises his fee setting authority pursuant to Section 10 of the AIA. See below:

    Question FEE4: If I meet the micro entity of the AIA, will I be able to pay a micro entity fee beginning on the date of enactment – September 16, 2011?

    No. The AIA does not permit the USPTO to apply the 75% micro entity fee discount until the micro entity fee for a specific item is set or adjusted using the fee setting authority provided in section 10 of the Act.

    So the microentity provision effective date is September 16, 2011, but the fee reduction benefit of being a microentity won’t happen until Kappos exercises his fee setting authority under Section 10. Wonderful (and if you detect sarcasm, you’re correct).

  20. American Cowboy September 20, 2011 11:04 am

    The rule creating a race to the patent office makes for haste in patent application preparation. That makes waste because as everyone knows: haste makes waste.

    That is the primary reasons ftf is a stinker.

  21. Stan E. Delo September 20, 2011 11:42 am

    I just checked out the comments so far on the USPTO site for doing so, and was very interested to see how few comments have been posted so far. http://www.uspto.gov/patents/law/comments/aia_implementation.jsp

    There is a very good comment by Booth at #4 in the practitioner section that almost exactly mirrors the discussion here about the term disclosure and it’s lack of a definition, so it seems as if we are not the only ones puzzled in that regard. This opportunity to reach straight through to the PTO while they try to figure out the implementation of the AIA seems to be too good to pass up on. I got the impression that it might take a week or more for comments to get posted, but patience is still a virtue.

    Stan~

  22. Stan E. Delo September 20, 2011 1:48 pm

    Also the AIPLA comments by Pedersen are good food for thought as regards the grace period.

    Stan~

  23. step back September 20, 2011 4:23 pm

    Stan,

    Thanks for the heads up on practitioner-filed questions

    I got a good LOL fit over this one:
    http://www.uspto.gov/patents/law/comments/x_aia-fi_partow-navid_20110915.pdf

    Basically, if the practitioner is correct, a publication in Pig-Latin will qualify since no language is specified. (OMFG!)

  24. Mark Nowotarski September 20, 2011 4:29 pm

    Here’s a link to the USPTO FAQ on microentity fees http://www.uspto.gov/aia_implementation/faq.jsp#heading-4

    Bottom line, they don’t go into effect until the Director exercises his fee setting authority under section 10.

    So it could be a while.

  25. EG September 20, 2011 4:48 pm

    Mark,

    Thanks for provding the link on when the microentity fees go into effect. Yep, it’s likely to be at least a couple of months before that fee reduction is “actually” officia.

  26. Stan E. Delo September 20, 2011 4:53 pm

    I am thinking of posting this to USPTO comment page, and am wondering what others might think before I post it? No need to be nice, as you only get one chance to make a good first impression. Whattaya think?

    Stan~

    It has come to my attention that the term “disclosure” has not been addressed adequately in the Leahy Smith America Invents Act, which has been noted by several very knowledgeable Patent Attorneys on a few different prominent patent blogs. It seems as if there is some confusion about what constitutes “disclosure”. and how it might have damaging consequences for said attorneys’ clients, unless the definition of “disclosure” is more accurately defined by the USPTO during the implementation of the Leahy-Smith America Invents Act. In the AIPLA comments, Pedersen points out some of the possible problems, which I herewith applaud. As Hal Wegner pointed out in the Foley Lardner presentation about the AIA, the legislation took about four 102 sections, and attempts to mash them all into a single paragraph, with arguably a fair amount of confusion resulting from the Congress inadequately considering the import of their hasty writing of the relevant portions of the H.R. 1249 legislation. Also, the 1249 bill has several editing notices at the end of the bill, which makes it nearly impossible to really understand the bill, unless several weeks are spent trying to apply said “corrections” to the language of the legislation. Until that editing has been done, and a Technical amendment to the language used in the bill by the USPTO has been suggested, the bill as written will be very confusing for several years at least. There is no clear way to determine whether public publication, offer for sale, previous patent applications as in PPA’s, or public use for testing purposes, or conveying the concepts using improper non-diclosure agreements will become bars to acquiring patent rights.

    Respectfully yours,
    Stan E. Delo
    Port Townsend, WA

  27. step back September 20, 2011 5:03 pm

    Stan,

    I think you are wasting time & energy complaining to a government body that has no power to change the law. Only Congress can change the law. This is change we can believe in although it’s not the hopey changey thing we were wishing for.

    Your time is better spent helping us figure out strategies for dealing with the new law. What does it mean, how can we proactively overcome spring-door traps in the law and where are they?

  28. Stan E. Delo September 20, 2011 5:29 pm

    Step-

    They are asking for suggestions to help clarify the *law* as passed, and I don’t happen to see it as complaining at all. Just a request for clarification and predictibilty for practitioners’ clients. As somebody mentioned in the comments section, the law will have to be clarified in the next 6 months, as the FTF provision will become extant at 18 months, so a few months to advise clients about what they should plan to do would seem to be at least considerate on the part of the USPTO. I am just a humble independent inventor, but would like to see the USPTO get things reasonably right the first time, which Bob Stoll suggested during the Foley Lardner presentation. There may be a few strategies to deal with this mess, but right now it seems as if we would be shooting at a rapidly moving target, and I don’t know how much lead to give it right now.

    Stan

  29. Stan E. Delo September 21, 2011 1:21 am

    Step writes in part:
    “I got a good LOL fit over this one:
    http://www.uspto.gov/patents/law/comments/x_aia-fi_partow-navid_20110915.pdf

    Basically, if the practitioner is correct, a publication in Pig-Latin will qualify since no language is specified. (OMFG!)”

    It sounds exactly like a question that was *answered* during the Wolf Greenfield presentation, and is probably from the same practitioner I would imagine. They said it wouldn’t matter much as long as the US application was derived from a PCT application that elected the US during the national stage. Pretty cute gambit dontcha think? Talk about your basic submarine application! 30 months to see which way the wind blows before they have to put up or go away quietly.

    Stan~

  30. Mark Nowotarski September 21, 2011 9:06 am

    Stan,

    Regarding your memo, I think your point about the editing is an important one. I also think the USPTO should clarify what certain terms, like “otherwise available to the public” 102(a)(1), mean through their rule making.

    You might want to edit out the criticisms of how the bill was arrived at (e.g. “hasty writing”). I think that, in the eyes of the USPTO, that would detract from your otherwise excellent points.

  31. Mark Nowotarski September 21, 2011 9:15 am

    Stan,

    Regarding non-English publications, they have always counted as prior art. If a publication is encoded, however (e.g. “pig Latin”), then I don’t see how the invention can be considered be “described in a printed publication” or “otherwise available to the public”.

  32. Stan E. Delo September 21, 2011 1:05 pm

    Mark-
    Point well taken, and thanks for the input.

    Stan

  33. Stan E. Delo September 21, 2011 7:07 pm

    BTW Mark-

    Satya Pal Asija was apparently the first to ever to get a software patent allowed, circa 1974 or so. I heard some disputes to that claim, but I took them with a grain or two of salt. He is located in Shelton, CT, and is a wonderfully humorous kinda guy if you talk to him on the phone. Otherwise he tends to be very terse, as trying to type in English might be a bit annoying for him. He is fluent in about 6 languages as I seem to recall, which I found and find to be pretty astounding. He was initially denied a patent, but then got busy and went on to become a patent attorney, whereupon he finally succeeded in getting his invention awarded a patent.

    Definitely getting an A for effort in my book, which I found to be very inspirational. He sorta opened a Pandora’s box in some senses, but what price for progress? I think he might really enjoy your presentation, if you can contact him somehow. I think he is Pakistani originally, so has a very delightful *accent*, so to speak. http://ourpal.com/default.aspx

    With my best regards,
    Stan~

  34. Oleg M September 22, 2011 4:17 am

    What does “directed to or encompassing a human organism” mean? Especially the first part of the phrase. Unfortunately English is not my native language I even don’t reside in the US, but US patent law is a subject of my interest and the question is could be medication, implants, artificial organs or treatment methods considered as “directed to a human organism”. It would be great if a Gene makes a post with clarification from his point a Sec. 33.

  35. step back September 22, 2011 3:12 pm

    Oleg,

    This question has gone round and round at that other patent site (Pat-O) without clear resolution.

    The interpretation of “directed to … human organism” can run the gamut from very specific to completely open ended. Until the courts begin to rule on this language, we won’t know for sure.

    Sorry if we cannot give you a better answer. Unfortunately we attorneys do not write the laws. Congress does. Then we have to deal with them as best as we can.

    Also, for your line of work (where public clinical trials might be necessary), check out Dave Boundy’s excellent article at this site:
    http://www.reformaia.org/news/why-america-invents-act-bad-startups-and-bad-america-david-boundy

  36. Stan E. Delo September 22, 2011 4:41 pm

    Oleg and Step-
    What I seemed to be hearing during the Foley & Lardner presentation is an attempted prohibition towards the attempted patenting of human cloning methods, or perhaps even human stem cell or genome technologies? As Step aptly points out, it might take some time and a few (or several) court cases to decide what the new law actually is trying to say.

    Thanks for the tip about the Boundy article Step.

    Stan~

  37. Stan E. Delo September 22, 2011 5:46 pm

    Step and BD-
    According to your studies of the AIA, do you think I would be better off filing PPA’s in a stream of development manner, or waiting until I have an actually well-developed *invention* to be able to file a well-informed NPA? In the latter case I will have to keep everything confidential to avoid losing possible foreign rights of course, and will have to allow publication at 18 months. I tend to think I would rather forego foreign rights, in the interest of keeping them concealed as long as possible. China is listening, as I had a patent agent suggest the reason I couldn’t do a patent search for a while at the PTO was because their search function was maxed out by bulk downloads from foreign entities.

    Colour me a bit sceptical right now.

    Stan~

  38. Mark Nowotarski September 22, 2011 9:45 pm

    “According to your studies of the AIA, do you think I would be better off filing PPA’s in a stream of development manner, or waiting until I have an actually well-developed *invention* to be able to file a well-informed NPA?”

    Stan,

    This is something you will have to work out with your agent/attorney. One of the factors you might want to look at is the field of your invention. Some fields, like social media and mobile communications, are evolving very rapidly and you might want to lean more towards multiple incremental filings. Others fields are more stable and you might want to lean more towards more thorough invention development before filing.

  39. Stan E. Delo September 22, 2011 11:29 pm

    Thanks Mark-

    My field leans more towards the latter, as in making sure that the *device* actually works properly and is way more efficient and much easier to manufacture than any prior art that I nave been able to find so far. I guess I will just have to keep things much more confidential until I have further inventions to file. My wind turbine invention was a bit problematic, in that I needed to test it out in the real world, where folks driving by could see it in action, but in the future such behavior might constitute a *public disclosure* of some sort, and now that the grace period is arguably gone, I will have to much more careful, until Leahy and et al manage to figure out what is meant by public disclosure. Will testing my wind turbine in my own back yard perhaps be construed as a public disclosure? No publications, and my patent application requests non-publication of my application, so my current application would seem to be in sort of a limbo land right now, and future applications will have to take the FTF thing into account, so I will need to file about 3 more for other things before the First to Invent thing turns into a gaudy pumpkin sort of carriage or something. I am well represented, but that doesn’t mean that I am required to like the America Invents Act. They got it very badly wrong, and I am here to testify to that, at least from my perspective. Witness for instance the 18 page *comment* from IBM, which made me wonder Who was actually financing the re-election of various Senators, for instance. http://www.uspto.gov/patents/law/comments/x_aia-e_ibm2_20110916.pdf

    Sorry for my temerity, but I thought it needed to be said in the interest of fairness to ALL inventors, at least here in the US. FTF indeed. I guess we have been duly *streamlined* to fit into the grand world order or something like that. Off to the fridge to find some Fatalistic Fennel kool-aid to make things a bit more real for me I guess.

    Salut`
    Stan~ .

  40. Blind Dogma September 23, 2011 7:04 am

    Stan,

    As loath as I am to suggest this path, one must consider all options. The new prior user rights/ trade secrecy/ free rider path is an option that must be considered because it is now a fully legal mechanism.

    If you can get your invention “out there” in a commerical use, yet maintain as much secrecy about the key facets as possible and have a one year window built in before anyone else can achieve a patent on the invention (and given that first action on the merits, while variable per art unit, typically runs well past 18 months), you then can destroy any patent exclusiveness affect against you and your customeres. You can let someone else run the patent gauntlet, let someone else pay the money, time and sweat, and then free ride on that person’s power of exclusivity. In this way, their patent stops all other competitors, leaving the only competitor hamstrung with patent defense costs (and the hole of patent prosecution costs), while you enjoy almost all the benefits of their patent.

    I would be remiss as an attorney not to point out this legal tactic for your business consideration.

  41. Stan E. Delo September 23, 2011 2:34 pm

    BD-
    Thanks a lot for your suggestion, which dovetails very handily with what Boundy seems to be saying, although I have not had a chance to really study his posits thoroughly just yet. The strategy might work very well for a few of my ideas, which are not really inventions per se quite yet. It would tend to make me feel a bit like a thief in the night though, so perhaps I will just keep them stricly secret until I am ready to file 2 of my micro entity allowances before everything might perhaps go sideways once the FTF thing kicks in at 18 months. Like my wind thing, I will probably request non-publication, as I think that is still possible as far as I know, as I have no desire to *give* my inventions away for free to the rest of the world, probably 18 months before I would have any hope of getting my applications examined, and granted or maybe not.

    In the past, it used to be that the USPTO would keep confidential All patent applications, so that if a patent was not possible, the inventor could go back and try again, possibly creating something much superior by having to go the extra nine yards to avoid found prior art. Even the most intensive patent and publication search might miss some obscure document published in Whereizitstan in the fifties or something, and it might be written in Erdu or Hindustani or Sanskrit or something.

    Cheers,
    Stan~

  42. Stan E. Delo October 1, 2011 3:23 pm

    Perhaps some may be interested in attending a webinar featuring Dr. Donald Zune and others to try to deal with the implementation of the AIA. http://www.mbhb.com/events.cfm?action=rsvp&id=7 It looks pretty comprehensive, but will only be a little over an hour long.

    Cheers,
    Stan~

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