In follow up to my blog last month on the upcoming patent law changes, probably the most notable and critical to understand is the change from being a “first to invent” country  to that of a “first to file.”  Effective February 2013, only those who submit a patent application first for a claimed invention will be eligible to be awarded the patent, regardless if the invention was conceived or reduced to practice by someone else before that filing date.

This is a significant change in that it effectively wipes away the current benefit of the grace period afforded inventors, in particular small businesses, individuals and academic institutions, to take a year from the time they first publish or offer to sell the invention to submit an application for that invention. Currently, applicants seeking a patent in the United States can publish and/or offer to sell their invention without fear of losing patent rights provided they submit an application for that invention within one year of that offer for sale or publication.  This is a privilege limited to a few countries, with the majority in the world already following a first to file approach to patents.  In the majority of countries, this first sale or public disclosure of the invention bars the applicant from any patent in those countries as the sale or disclosure constitutes “prior art.”  Yes, in those countries, inventors can be barred from getting a patent because of their very own inventions being disclosed in this first sale or publication.

Effective  February 2013, the U.S. shall limit the existing one-year grace period that allows an inventor to “swear behind” sale or offers for sale or public use or public disclosure  of the invention that occur less than one year before the application’s filing date.  Under the new law, only disclosures made by or on behalf of the inventor or by one who obtained the disclosed information from the inventor will get the benefit of the one-year grace period.  This limitation will now apply anywhere in the world the sale or public disclosure takes place, unlike now, where the limitation is limited to sales or publications in the United States.  One exception to the rule is that this limitation will not apply when it can be shown the first filed application or patent was “derived” from the inventor of the later-filed application.  As you can probably guess, what “derived” comes to mean remains to be seen under case law and USPTO communications.

Thus, in the new patent world, applicants will need to be more diligent than ever in getting their applications together and plan accordingly for the costs and administrative requirements to be met in advance.

Such an approach should include:

• Contacting a patent attorney or agent to discuss the patentability of the invention prior to any public disclosure or offer for sale;
• Ensuring any business operations in which the invention may be disclosed or shared with other parties take places exclusively under a non-disclosure agreement or other contract to ensure an expectation that all such information disclosed is confidential and proprietary to the owner/inventor;
• Submitting a provisional or non provisional application to the USPTO (and to any other country’s patent office, if possible) in which protection will be sought to capture rights in any subsequent technological improvements or developments with the claimed invention.

While the change in patent laws promises to make the whole process more efficient, it also puts the inventor on notice not to rest on their patent rights. Individuals and businesses, alike, will need to plan for intellectual property further upstream in their business development cycle.