Practical Advice About Patents

Congress overhauled U.S. patent laws by passing the America Invents Act ("AIA"). On March 16, 2013, the U.S. changed from a first-to-invent to a first-to-file patent system.

Under the new system, only the first person to file a patent application for an invention can receive a patent, with few exceptions.

A "junior" inventor can race to the U.S. Patent and Trademark Office (the "Patent Office") and beat out a prior inventor, who waits to file.

If an inventor (or company) publicly uses an invention, or offers it for sale, before filing a patent application, any patent rights are lost. There used to be a one-year grace period to file an application after such an activity.

Other changes include procedures for challenging patent applications and issued patents at the Patent Office. These procedures are approximately 12 to 18 months long. They potentially preempt litigation on patents which never should have been granted.

AIA TIPS: Most companies should file provisional patent applications rather than nonprovisional patent applications (a.k.a. "regular" or "Utility" applications) before initially disclosing their inventions or offering them for sale (e.g., at trade shows). A provisional application is an informal, yet complete, disclosure of an invention filed at the Patent Office. It buys the inventor (or his assignee) one year to decide whether or not to file a regular patent application.

Provisional patent applications are relatively inexpensive. Therefore, most companies should file their provisional applications shortly after creating inventions. Update your provisional applications upon creating major changes (e.g., for a production model). This approach may avoid having someone beat you to the Patent Office.

Before you file, conduct a preliminary patent search using Google® Advanced Patent Search. Also try to buy your product online. If you do not find it, contact a patent attorney to conduct a more detailed search or to file a provisional patent application. Which comes first depends upon the timing of your company's first marketing efforts or public disclosure.