February 2013
Patent attorney Michael Hood (Brinks,
Hofer, Gilson, & Lione) helped us understand what the new patent law means
to inventors. This law applies to patents
and patent applications that contain a claim to an invention effectively filed on
or after March 16, 2013. United States
Patent Office (USPTO) rules
on how to implement the law are now available.
- First Inventor to File The date of invention no longer matters. What matters now is the date a patent application is effectively filed at a patent office. The inventor who files first anywhere in the world gets the first opportunity to get a patent. So a reasonable strategy is to file provisional applications early and often as you develop your invention.
You may ask the USPTO to cancel or reject
claims in a patent or patent application that are to your claimed invention if
the named inventor did not invent, but derived from you knowledge of, the
invention.
- Prior Art The USPTO issues patents only for inventions that are new worldwide. Prior art (i.e., public disclosure of an invention before the effective filing date of a patent application claiming that invention) is evidence that an invention is not new. Examples of prior art include a patent, published patent application, public use, and an offer to sell.
There are exceptions; not all prior
art matters. The law helps you avoid
working against yourself. Prior art by you,
your co-inventors, or someone who learned of your invention (directly or
indirectly) from you or your co-inventors, doesn’t matter for your patent application
if the prior art first became available within 1 year of the effective filing
date of the application. Likewise, prior
art by an inventor not named in your application doesn’t matter if, before the effective filing date of the patent
application claiming your invention, the invention disclosed both in the prior
art and in your patent application were both owned by, or obligated to be
assigned to, the same entity. This
feature lets an inventor file without penalty a patent application for an
unfinished invention. Realize that the
law rigorously defines an invention. Changing
one small feature of your claimed invention during patent prosecution can
change prior art that doesn’t matter into prior art that does matter.
- Filing a Patent Application Many individual inventors will now pay 75% lower USPTO fees. For example, the basic patent application filing fee for an inventor qualifying for the new micro entity status is $70, in contrast to the standard $280 fee or to the $140 fee for small entity status.
A company to whom an inventor
assigns rights to an invention may now file a patent application for the
invention.
If you need to get a patent
quickly, a Track One prioritized examination will give you a decision on your
application within about 12 months. Fee:
$2,400 for a small entity.
- Third Party Submissions A third party may now anonymously submit documents relevant to examination of a patent application while the examination is in progress. The party may also ask the USPTO to cancel claims of an issued patent.