Patent Reform

You may have heard that a patent reform bill was recently passed by Congress reforming the way our patent system runs.  If signed by the President, it will bring the largest changes to the patent system in over a hundred years.

Some of the changes:

First Inventor to File: The US currently uses a first-to-invent patent system.  That is, in the US, only the first person to invent a product can obtain a patent on it.  The rest of the world uses a first-to-file system, or more properly, a first-inventor-to-file system.  This bill brings the US in line with the rest of the world.  Now, a person who invents a product second can obtain a patent if he beats the first inventor to the patent office.  This poses some risk for independent inventors.  Large companies have divisions dedicated to patenting internal inventions.  By keeping everything in-house, they can develop an invention and file a patent on it very quickly.  In contrast, most independent inventors take time to file patent applications – they come up with an idea, think about it, develop it, look for a patent attorney, hire the patent attorney, discuss the invention with the patent attorney, and then hand over the disclosure to the patent attorney so that he can write the application and prepare it for filing.  The new law gives larger companies the upper hand.  That means inventors can’t sit on applications anymore – they will have to file quickly, or file provisional applications soon after conception of the invention.  But it doesn’t mean that someone can steal your invention and file a patent on it.  The law will require that the applicant be a true inventor, not a thief.  That is why it is called a first-inventor-to-file system.

Filing Fees: In addition to the already existing “Large” and “Small” entity statuses, the bill creates a “Micro” category, which will pay half the fees that a small entity pays, which are already half the fees that large entities pay.  This would mean, with today’s filing fees, micro entities would pay about $231 to file a non-provisional patent application.  Fees are expected to go up immediately for most inventors.  10 days after the law goes into effect, the government will charge a 15% surcharge on fees.  So if you are considering filing, file soon.

Prior Use Rights: In some situations, disclosing before filing can create some presumptive rights.  If someone accuses you of infringing their patent, and you can point to a disclosure made within one year before their patent application filing date.  But not all prior disclosures count, and some can waive your US and foreign rights.  Be careful and talk with an attorney.

Expedited Examination: If you don’t have some other basis for expediting examination, you can now request that your patent application be given priority with, essentially, a bribe.  An extra $4,800 governmental filing fee buys you into an accelerated examination track that could provide a final examination within 12 months, rather than the more typical 2-4 years.  It will have to be seen what effect this has on the backlog of non-prioritized applications.

Humans: No claims will be granted “directed to or encompassing a human organism.”  This language is bound to create a huge amount of litigation.

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