Things have changed recently
By Kurt Leyendecker
Over the years, I have written a significant amount concerning patent strategy and patent procedure aimed at entrepreneurial companies and individuals, and most of the information was available on my firm’s website. The firm recently unveiled a new modern and streamlined website. Much of the old content was removed with the intention of updating it and making it available as PDF white papers on our new site. What struck me most during the updating process is how dramatically my advice has changed in light of the changes to patent law, most of which went into effect a little over two years ago as part of the America Invents Act (AIA). Some of the procedural considerations are worth noting here.
Prior to March of 2013, the person first to invent a new invention was first in line to receive patent protection, even if another person who invented a substantially similar invention filed for patent protection first. Accordingly, I advised many of my clients to keep copious notes and fully develop the invention before filing a patent application, reducing the chance that the client would have to file a second or third application at significant additional expense because of changes made during development. Under the current first to file rules, however, whomever files first on an invention is the inventor who will receive a patent even over another later-filing inventor who came up with the idea first. Now, I recommend an inventor get an application on file as soon as reasonably possible, even if significant and potentially substantial changes may occur during subsequent development. The failure to file quickly could be the difference between receiving a patent or not.
I used to recommend against the use of provisional patent applications. For those who are unaware, provisional patent applications are less formal and less expensive applications that have a limited pendencyof one year, are never examined by the patent office and consequently never issue as a patent. Essentially, a provisional patent application provides a filer up to one year to decide whether to file a more formal more expensive regular patent application. Under the old rules, however, the need for a placeholder was less critical since the first inventor would be awarded the patent whether or not he/she was the first to file an application. Being less formal, the provisional application, especially if prepared based on a still evolving product, runs the risk of not satisfying one or more statutory criteria. Further, since provisional applications are not docketed for examination, the issuance of a patent is delayed by up to a year. Add to all this the additional cost of filing both a provisional and a non-provisional a year later and the drawback significantly outweighed the benefits.
Things changed with the advent of the first-to-file paradigm. While provisional applications still suffer from the risks mentioned above, to ensure that he/she is not beaten to the punch, an inventor is advised to file a provisional application as soon as possible after conception to secure his/her priority rights even if changes may occur to the invention in the coming year. Changes, if they occur, can usually be incorporated into the regular patent application when it is filed. Unlike before, timing has become critical and takes precedence over other considerations.
Traditionally, patent lawyers have as a matter of course fought to obtain for their clients as broad of patent protection as is possible. With broad protection, however, there is a risk that if litigated, a court will invalidate the patent as being obvious or anticipated by prior art that was not previously considered by a Patent Office patent examiner. This risk was balanced by a presumption of the patent’s validity and the substantial cost of seeing litigation through to its conclusion on the hope of obtaining a favorable invalidity verdict instead of an unfavorable infringement verdict. Cost and uncertainty pushed most cases to settle.
The AIA instituted a new review procedure that permits a party to challenge a patent’s validity on limited grounds and, most significantly, obtain a ruling within a little over of a year. This process replaced re-examination which could be dragged out for years. The difference in timing is significant. Under the previous procedure, a patent holder suing an alleged infringer could hold out in re-examination until the patent case concluded and hopefully a judgment of infringement was entered; whereas, under the review procedure, a validity determination is made long before the court case concludes, giving the alleged infringer a bit of a timing advantage.
The point of the foregoing is simple: Patent claims are more likely to be adjudicated and broad claims are more likely to be found invalid than ever before. Narrower, carefully tailored claims are more likely to survive a challenge. Unlike in the past, I am more likely to advise a client to take allowed patent claims that are narrower than I might have in the past. The consideration as to whether a claim is not only reasonably broad but also able to withstand challenge must now be more seriously considered.
For the entrepreneur and business owner, the upshot of all this is simple: When you have an idea or invention you believe has potential value, see a patent attorney as soon as possible to discuss what steps are necessary to maximize your potential protection and value. Waiting is more dangerous than ever.