The early filer gets the patent
by Gregory Zeller
Published: January 23, 2013
Imminent changes in national patent-application rules are keeping patent attorneys busy – and may speed them up.
The Leahy-Smith America Invents Act delivers the biggest changes to the U.S. patent system in 60 years, many of which kick in March 16. Most notable is a switch from a “first-to-invent” to a “first inventor-to-file” patent-application system, basically giving weight of law to the first patent applicant, even if a competitor can show earlier development of the same invention.
The new law also repeals current U.S. Patent Office “interference proceedings,” which determine priority among inventors who file near-simultaneous applications. It also includes provisions for expired patents and a rule allowing outside interests to file patents on behalf of inventors without the inventor’s permission, under certain conditions.
Sounds fairly dry, but proponents and opponents cited heavyweight reasoning before the bill became law in September 2011. Supporters noted stronger legal protection for startups with patented technologies, in turn promoting innovation and global competitiveness; challengers predicted a stranglehold on angel and venture capital by experienced inventors, in turn deflating the startup market.
Ultimately, the “first inventor-to-file” system is meant to streamline the works by providing a foolproof filing date all parties can reference in a patent dispute. The race to claim that legally binding patent application doesn’t necessarily mean inventors will invent faster, but it could change the way patent attorneys operate.
If nothing else, the AIA will keep patent attorneys busy, according to
of the Garden City-based intellectual property law firm
Scully Scott Murphy & Presser. As March 16 approaches,
Bernstein sees two significant flurries of activity for patent attorneys,
the first from “companies and inventors who want
to avail themselves of the old law.”
Bernstein cited “certain advantages” to the current first-to-invent system, which allows inventors to antedate patents by showing they actually invented something first.
“Here’s my lab notebook, here’s something I published that shows I was first to invent this,” he said. “Even though some other guy may have patented this before me, I’m able to go behind that.”
A second flurry of activity, he added, will follow AIA implementation, though “there has to be a flurry of inventions to be a flurry of filings,” he noted.
“The invention process can generally be a long one,” Bernstein said. “Until you’ve actually made your invention, there’s nothing to file on.”
The attorney cited a recent patent Scully Scott helped secure as a prime example of the AIA’s intent. Dr. John Chapin, a professor of physiology and pharmacology at SUNY Downstate Medical Center in Brooklyn, received a patent in June 2012 for a brain-machine interface device, completing a patent application he filed in 2003.
A sort of better mousetrap with a 1950s sci-fi twist, the device facilitates remote control of rodents “by stimulating part of their brains with electrical pulses,” Bernstein noted. “I believe it’s painless.”
The SUNY Research Foundation website notes the advantages of using “remotely guided animals” in search and rescue, hazardous material and other dangerous operations. The brain-machine apparatus – which commands animals to run, stop, turn, dig and detect specific odors – will “make a substantial difference in the way we penetrate remote spaces and move through difficult terrain,” Chapin said in a written statement.
The nine-year patent-application process was filled with continuations and challenges, Bernstein noted, adding two-to-four-year applications are more common. During those nine years, Chapin’s mind-control device had “patent-pending” status, meaning the inventor could warn infringers; with the patent finally in hand, he now has legal options to back up those threats.
“He can sue them, basically,” Bernstein said.
That’s what makes the AIA so important – first to file, first to qualify for “patent-pending” status, first to get the patent, with fewer challenges along the way. But one of Long Island’s top inventors warns his fellow tinkerers not to let the AIA’s provisions rush them into anything.
Brian Fried, a Melville-based inventor and entrepreneur, is going to “continue doing exactly what I’ve been doing” when it comes to patent applications. The CEO of Think Up Designs and founder of the Inventors and Entrepreneurs Clubs in Nassau and Suffolk counties warned inventors to “do their due diligence before they file, no matter what the (patent) application process is.”
“There are many inventors who come up with this great idea, and the first thing they do is file for a provisional patent,” Fried said. But there’s an important step that should come before that.
“I’m treating each of my ideas as its own business,” Fried said. “When you open up a business, you need to do your research and development and make sure it’s your idea, not somebody else’s.”
Inventors can waste time and other resources if they don’t do their homework, Fried added, and the AIA’s early-bird advantages will be useless.
“Before you put money into a provisional patent, it’s always good to do a search to make sure it’s your idea,” he said. “Once you do that, you can get some drawings made and get a prototype done and do some general marketing.”
Fried noted that it’s often impossible to move forward with an invention without outside resources like artists and investors, so he always keeps a log “including emails and phone records.”
That sounds like a good strategy for protecting an idea under the first-to-invent system, by Bernstein’s interpretations, but to keep up with the AIA, “the best thing [inventors] can do is approach competent counsel as quickly as possible,” the attorney said.
Bernstein agrees that the AIA cannot and should not make inventors invent faster,
but he believes under the new law, “it behooves inventors to approach counsel sooner.”
“The competitor is out there presumptively doing the same thing,” Bernstein said. “While there are provisions asserting that an invention might have been derived from someone else’s invention, the best way to avoid that is to ensure that you have a properly drafted patent application … so you’re not second in line.
“The second guy really now has an uphill battle to prove the invention wasn’t derived from the first guy,” he added. “That’s a difficult thing to show.”