The Senate on March 8, 2011 voted 95-5 to pass the historic patent reform bill (S23) changing the US patent system from first to conceive to first to file. The House will soon issue its own reform bill. To take effect, the two versions will need to be reconciled by committee and approved by the president.
The final version is not yet available. Therefore this newsletter discusses the Senate bill and what it means for the little inventor. Its many provisions include the following:
· Change from first to conceive to first to file
· Change in the grace period
· Micro-entity status for reduced fees
First to Conceive vs. First to File
Until the change in the law takes effect, the US remains the only country in the world where the person who first conceives of an invention is the legally recognized inventor. If an inventor files after someone else, the current law provides for a mechanism called interference that allows the inventor to prove by means of documentation, such as log books, receipts, and affidavits, that he was the first to conceive. Interference can be complicated, expensive and uncertain. According to U.S. Patent Office director David Kappos, the probability of interference, especially for small inventors, is exceedingly small - not worth the complications of the first to conceive law.
The new law will recognize the first person who files as the legal inventor. Many analysts disagree with director Kappos and believe that it will encourage a rush to the patent office with half-baked inventions and poorly drafted applications and that it will hurt small inventors not supported by the legal and technical resources of large corporations.
Currently an invention cannot be patented if the inventor has publicly disclosed it more than 1 year earlier. Public disclosure can occur by a public use, public sale, a publication, or a patent (MPEP2133). If the disclosure is within the year, the inventor can still patent it in the U.S. In contrast, most countries disqualify inventions immediately after publication. This time interval called the “grace period” is of great benefit to small inventors who often need to refine their prototypes and test the market before they file.
The new law provides a much weaker grace period protection than the current law. While it recognizes the first to file, it also states that a public disclosure within one year of the filing date does not count as prior art to the invention.
This provision allows the inventor to lock in his rights to the invention by issuing a defensive publication. In doing so, he bars anyone else from patenting his invention – except himself.
Unfortunately, such a publication will prevent him from obtaining a patent in most other countries. In the US, it will start the clock ticking and commit him to file within one year or lose all his rights.
In summary the inventor will have to make a choice:
- Either to publish early and thereby commit himself to file within a year, losing his international rights and possibly tipping his competitors at a crucial time,
- Or not to publish and risk being preceded by someone else at the patent office.
It will still be possible for him however, to divulge his invention to others without starting the one year clock, if he does it on a confidential basis. To protect himself, he should have a non-disclosure agreement and record his invention with a time stamp service such as mycreativeregistry.com
The loss of the grace period will significantly impact the small inventor. It is extremely important for inventor associations to lobby their congressional representatives to maintain a strong grace period.
As per the current law, the patent office charges regular fees to large entities, that is, organizations with more than 500 employees, and up to 50% reduced fees to small entities, with 500 or less employees.
The new law defines micro entities for the purpose of further fee reduction. To qualify as a micro entity and inventor cannot have any of the following:
- 5 or more patent applications,
- a gross income exceeding 3 times the most recently reported median household income; and
- his invention assigned or conveyed to a larger entity.
Other Changes in the Law
The new law provides for other changes such as:
- An ombudsman for resolving conflicts between inventors and the Patent Office.
- Greater control by the Patent Office of its finances.
- Satellite offices outside Washington DC.
- USPTO authority to prioritize the examination of inventions of national importance (such as invention related to energy, water, etc).
- Post grant review for business method patents – a mechanism for infringers to petition for a review of patent claim validity.
- Elimination of the lack of the best mode disclosure as grounds to invalidate a patent.
For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.
If you have any question you can contact me at (858)259-2226 or email me at email@example.com.
This newsletter should not be construed as being legal advice. ©2011 by George Levy