Patent Reform: What Inventors Need to Know

Patent Reform: What Inventors Need to Know

by Dan Goldman, Esq., September 2011

In a rare show of bipartisanship, the United States Congress moved a sweeping patent reform bill through both houses, approved it in committee and sent it to the President to have it signed into law. On September 16, 2011, President Obama did just that, effecting the first major set of patent reforms in the US in decades. The America Invents Act is truly historic—but what does it mean for the independent inventor? Much. Read on.

The Act does a lot—the Senate version totaled 116 pages, and the House version 140—and covers ground from US Patent and Trademark Office (USPTO) funding itself, to post-grant review, and everywhere in between. Several sections of the Act are controversial—including the funding portions. But nothing in the Act has provoked more controversy in the inventor's community than the Act's shift of the US patent system from “first to invent” to “first inventor to file.” This is seen by many as a seismic shift in the way patents are awarded in this country, and there is wide speculation about the effect it will have on innovation in this country.

Shift from First-to-Invent to First-Inventor-to-File System

Since the federal government began granting patents, America has always been a first-to-invent country. That is to say, the first person to invent a particular thing or process is the one awarded the patent on that invention—regardless of whether someone else beats him or her to the USPTO with an application for that same invention. This has removed a certain amount of urgency in the patent filing process—there is no real “race to the Patent Office,” since the first inventor gets the patent (assuming he or she can prove s/he is truly first). Many other countries use a first-to-file system, and many in the US believe that this difference is what has allowed the US to maintain its position as the world's leader in innovation.

Well now the world will have a chance to find out if that's true. “First inventor to file” is really just “first to file,” since no one other than an inventor has ever been allowed to file a patent application. So we're now looking at that race to the Patent Office that the former system avoided. Invent something but have to go to a friend's wedding before filing your application? I might beat you to the punch, even if I invented after you—and there's nothing you can do about it. If you expand your hypothetical competition from me to, let's say, Apple or Google or Boeing—mega-companies with hundreds or thousands of engineers and inventors on staff—then you'll start to see the true danger of the Patent Reform Act to the independent inventor. Specifically: Those companies file more patent applications in a day than most independent inventors file in a lifetime. To put it in concrete terms, Apple filed eleven applications on September 1, 2011. So now the independent inventor is racing to the Patent Office against…Apple. The analogies are too cheap to even bother with.

Get to the Front of the Line with a Provisional Application for Patent

So what can you, the independent inventor, do to mitigate the effect of “first inventor to file?” Your number one weapon in this fight is the provisional application for patent. A provisional application allows you to get your invention on file with the USPTO much more quickly, easily and at far less expense than filing a full, non-provisional utility patent application. A provisional application requires no claims—indeed, it has no “formal” requirements at all and is not examined on its merits at all upon receipt—and it holds a place in line for your invention as of the date of its filing. That filing date is preserved for a full year, during which time you can finish fleshing out your invention and work up a great corresponding non-provisional application. When you file that corresponding non-provisional application, your filing date is the date when you filed your provisional application—in other words, you've gotten to the USPTO a whole lot faster with your invention.

Let Inventors Keep Innovating

“First inventor to file” carries with it serious concerns for the independent inventor. But don't let the new system stop you from inventing—the independent inventor has always been and always will be the backbone of American innovation, the poster child for American ingenuity. If you've got a brilliant invention and don't want to see someone who happens to be better capitalized (or just fleeter of foot) than you get the patent that you deserve, get to work on your provisional application for patent and make sure that the first inventor in the race to the Patent Office is you. Because the race is on.