April 2012

(Thanks to Dave Zedonis for reporting this presentation.)

Mr. Cedric D’Hue (patent attorney with Bingham Greenebaum Doll LLP; 317-635-8900; cdhue@bgdlegal.com) discussed the recently passed America Invents Act.

The Act is a step toward creating a single worldwide system of patent law that would simplify and decrease the cost of getting and enforcing a patent.  Among other things, the Act specifies a new requirement for getting a patent from the United States government.  Now, a patent is awarded, by the U.S. to the first inventor of an invention who within a reasonable time applies for a patent, and by almost all other countries to the inventor of an invention who first applies for a patent.  The U.S. now awards a patent to an inventor who is the first to document imagining the invention and who diligently embodies the invention, either as a working model or as a patent application that alleges that the invention works as intended.  As of March 2013, the U.S. will join almost all other countries in awarding a patent to an inventor who first embodies the invention as a patent application, regardless of whether that inventor was the first to document imagining the invention.

Both now and under the Act, a provisional application for a patent is a useful tool that holds your place in line for getting a patent.  This kind of application can not itself lead to a patent, but is a relatively inexpensive way to get at-first-glance priority over other true inventors seeking a patent for the same invention.  The application must describe the invention in enough detail to enable one of ordinary skill in the technology to make and use the invention that will be eventually claimed in a nonprovisional application, which can lead to a patent.  Now, but even more so under the Act, an inventor will tend to file a provisional application for each inventive increment of an invention, rather than to file an application for only the finished invention.  Within 1 year after filing the first provisional application, an inventor who still wants to devote the time and resources needed to get a patent will roll all of the provisonal applications into one nonprovisional application.

Thank you for helping us understand the new Act, Mr. D’Hue!