December 2011
(Thanks to Dave Zedonis
for summarizing this event.)
Members met to discuss how they are adapting to the Leahy-Smith
America Invents Act (9/16/2011), which imposes the biggest change to U.S.
One provision of the Act takes away the long-standing
American right of the first inventor of an invention to claim patent protection
for the invention. Now, in keeping with
long-standing European law, an inventor (1st or 1001st)
who first applies for a patent has the right to claim the patent.
One strategy for adapting to this change is to file a series
of provisional applications as you gradually develop your utility invention. Doing so gives you a particular file date for
each inventive increment of an invention.
Then, within 1 year of filing your first provisional application, file a
nonprovisional application that incorporates the previously filed provisional
applications. Within that 1 year, you
may sell, test, or test market the invention, or begin to create a
manufacturing or distribution network for the invention. In doing so, the use of nondisclosure
agreements can help maintain the patentability of your final invention.
The Act did not change the value of hiring a professional to find out,
before you submit a nonprovisonal application, whether published information would prevent
you from patenting your invention.