Winning With the New Patent Law

February / March 2012 By: Bruce Winchell Volume 10 Number 1

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Agile entrepreneurs and small businesses can be big winners under the new patent act.  Just follow this strategy for maximizing your advantage. The people who pay attention to the requirements of the new patent act will be the big winners when the new first-to-file provision goes into effect on March 16, 2013.

After March 16, you should spend your time more profitably by writing non-provisional patent applications.  All you need to write such applications is a conception of the invention, a detailed description with drawings that include how to make it and how to use it. Under the new first-to-file provision, you will no longer need to have detailed notebooks. Instead, you must be the first to file a patent application with claims to be the winner almost all the time.

This constitutes what we would call a race statute in that it promotes very fast filing of applications instead of promoting invention. This will significantly increase the filing rate of patent applications and at the same time will also increase the decline in the quality of applications filed.

The lower quality of the applications is not a significant problem, however.  Even if your application is not of high quality when first filed, you will be able to fix it later—and you will be the winner. If you find that there are mistakes in your application or that there is additional material you want to include you can at any time before the patent issues add material to the detailed description and the drawings.  That’s called a continuation-in-part application.

Knowing the prior art before you file an application will enable you to save a lot of money on filings.  You should go to the Patent Office web site (uspto.gov) to do a prior art search in the field of your invention. The search will help you to understand how to craft claims in your application that will enhance the value of your application with its first-to-file filing date.

While under the new act there is still a grace period of one year from a first publication until you must have filed your patent application, those who sit on their inventions for that period of time after having made any kind of publication will have committed suicide under the new law. If you immediately file a non-provisional patent application before any publications or mention of the invention of any kind, you will very likely be the winner.

Also under the new statute:  If you have notebooks proving that you are the first to invent , there will be a derivation proceeding available to prove that you were indeed the first. The problem with this proceeding is that the burden of proof will be a heavy one on anyone who was the later filer of an application in the patent office. You will quickly discover that keeping notebooks after March 16, 2013, will not be worth the investment of time and money. So always be the first to file under the new statute to be the big winner.

The new statute is designed to make those who file patent applications really fast the winners and all those who take their time to complete the invention through reduction to practice the losers.  The law is also designed to make those large entities that spent a lot of time sifting through invention disclosures to determine which ones they would file as patent applications losers.  Time, you could say, is of the essence.  Delay is your worst enemy.

One skill you're going to need to succeed is the ability to write your own non-provisional patent applications. And there’s help available.  For example, Technology Ventures Corporation, a nonprofit foundation based in Albuquerque, N. M., offers regular workshops on how to write your own non-provisional patent application. For more information, go to www.techventures.org.

Books on how to write applications are available from Legal Zoom (www.legalzoom.com), Nolo Publications (www.nolo.com) and Books for Less (www.lawbooksfor less.com).

Bruce Winchell is the resident patent attorney at Technology Ventures Corporation.