Posts Tagged: "first to file"

The Benefits of a Provisional Patent Application

Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.” Perhaps most importantly, now that the United States has become a first to file country and abandoned our historic first to invent ways it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.

A Simple Guide to the AIA Oddities: First to File

Let’s take a step back and consider the nuance of the so-called grace period that remains under the AIA. Under the new law we know that in some cases an inventor who publishes information about his or her invention will not be prevented from obtaining a patent if someone obtained or derived a subsequent disclosure from the inventor. The USPTO has told us that the second party, the deriving party, does not have to publish something that is verbatim in order for the true first inventor to be able to prove that the second party is a deriving party. In other words, the USPTO is telling us what the second party does not have to do in order for the first, disclosing inventor to claim entitlement to the grace-period. Unfortunately, stating something in the negative is not particularly illuminating as any patent practitioner can tell you. Saying something is “non-planar” is useful information but it doesn’t exactly tell you what that something is, instead it only removes one of an endless number of possibilities.

The America Invents Act: Traps for the Unwary

Consider the following: On Friday, March 15, 2013, an applicant could file a U.S. patent application covering an invention that was the subject of a publication provided the publication was dated less than 1 year earlier. This was true even if the publication was by another individual or entity that independently arrived at the invention on his or her own. Effective Saturday, March 16, 2013, if another individual or entity independently arrived at the invention and published an article before the first inventor filed the first inventor who filed will be unable to obtain a patent unless the subsequent disclosure was nearly identical to the first disclosure.

Top 5 Post AIA Implementation University Considerations

Considered by many as the most comprehensive revision to the United States patent system in over 50 years, the America Invents Act (“AIA”) represents progressive legislative reform intended to align U.S. patent policy with global precepts, i.e., systems which reward the “first-to-file” a patent application. Many AIA provisions modify or completely change the former first-to-invent (“pre-AIA”) U.S. patent system, with the most immediate and conspicuous AIA component?the establishment of a filing-based regime as of March 16, 2013?serving as the hallmark and mark of U.S. patent reform.

Nonetheless, having only enjoyed 3-months of the AIA in its entirety, it is still too early to appreciate the de facto impact of this nascent legislation. The AIA has nevertheless ushered in transitional strictures that have uniquely placed research institutions in an ostensible patent?policy “reformation” with respect to technology evaluation and knowledge translation. While the pervasive nature of this new patent regime imparts an array of university-based concerns, the following Top 5 considerations are intended to reengage university professionals and employees with patent reform concepts and concerns during the initial “aftermath” of the AIA.

Patent Attorney Services After First To File. WHAT to File?

Just as most of society wrongly considers doctors as “gods”, many patent clients wrongly think that patent attorneys will help them achieve these business objectives simply by filing a patent. To be fair, patent attorneys are not being hired to study the client’s market, nor their competitive position within the market. They are not hired to develop the client’s internal IP budget, nor to help the company strategically develop an IP portfolio that could boost exit value. Such an engagement could be fraught with conflicts and confusion. Unless attorneys make clear the limited and narrow scope of their services, and unless and until clients become more IP-savvy, clients will continue to incorrectly assume that all is fine in their Patent La-La Land; nothing is further from the truth.