Patently Obvious – Sept 2011 Update
A new law signed by President Obama this month could mean a speedier patent approval process for inventors across the country.
The Leahy-Smith America Invents Act, regarded as the most sweeping patent law in 60 years, was passed on September 16, 2011. The law awards patents to the first person to submit an application, adopting the first-to-file over the first-to-invent system. The objective is to reduce lawsuits and streamline the patent process. “Somewhere in that stack of applications could be the next technological breakthrough, the next miracle drug, the next idea that will launch the next Fortune 500 Company,” said President Obama at the signing ceremony at Thomas Jefferson High School for Science and Technology in Alexandria, Virginia.
While in the past, the patent process has been burdened with lawsuits that stifle innovation, the America Invents Act aims to streamline the patent process in order to foster innovation that will stimulate the economy and create new jobs as well as keep the U.S. competitive globally.
Glenn Henneberger, Partner at Hoffmann & Baron LLP, advises that under the new law, the party who files first will be granted the rights over subsequent filers regardless of who invented first. This makes it more important to file an application as soon as possible. The first to file provisions go into effect on March 16, 2013.
“You can’t wait to file,” says Henneberger, “From the time an inventor presents his information, it may take a patent attorney two to three months to prepare, review and revise the papers. A provisional application can be filed more quickly to gain an earlier filing date and allows the inventor one year to file the non-provisional application.” The best tip for inventors? File early and definitely file a provisional application.
Other implications of the American Invents Act pertain to changes that will reduce lawsuits. In false marketing lawsuits, private parties must prove damages, which should reduce the number of patent litigations. Business method patents will be looked at more closely to reduce lawsuits as well.
The new act provides a fee reduction for “Micro Entities” – small inventors who have had less than 4 patents to their name and with incomes less than 3 times the median household income.
Finally, the America Invents Act gives third parties an opportunity to participate in the examination process. Third parties may submit information to the patent office that could affect the scope of the patent process.
Thanks to Glenn Henneberger, Partner at Hoffmann & Baron, LLP for his contribution.
Glenn Henneberger is highly experienced in all aspects of intellectual property law with an emphasis on inter partes matters including patent and trademark litigation before the federal and appellate courts as well as the Supreme Court of the United States. He is also experienced in all phases of patent and trademark prosecution before the United States Patent and Trademark Office. Practice expertise includes all phases of intellectual property law including litigation, licensing, reexaminations, foreign oppositions, product clearances, opinions, and domestic and foreign patent and trademark prosecution.