On September 16, 2011, President Obama signed into law the America Invents Act, the most important modification to U.S. patent law in 60 years—and some even argue, since 1836. Some changes went into effect immediately, such as fee penalties for submitting paper applications and strict rules on when multiple defendants can be joined together in one lawsuit.
These immediate changes were not as important to most inventors and tech companies. Instead, the big focus has been on the switch from the “first-to-invent” guideline for awarding patents to a “first-to-file.” Another change of great interest are the new types of challenges that can be used by third parties to prevent a patent from issuing, or to get it revoked. The changes in patent challenges take effect on September 16, while the new first-to-file rule begins next year, on March 16.
This doesn’t mean inventors and tech companies should be in standby mode, however. Actions that inventors and companies take now could affect patent applications and patents filed for and issued after the new provisions take effect. Thus, it is imperative for inventors and tech companies to start preparing immediately for the new world under the America Invents Act.
As a patent litigator, inventor, and professor of patent law, here are my five most important steps you or your company can take in advance of the First-to-File switchover:
—Get your documentation and lawyers ready to file patent applications on all of your current inventions by March 16, 2013.
All applications filed after March 16, 2013, that cannot trace all claims that were submitted at any time in the application to an earlier application fall under the new first-to-file rules—which in the vast majority of situations, can only hurt the applicant. Thus, under nearly all circumstances, make sure to file before March 16, 2013.
—Be careful about disclosing, selling, or using your invention in a commercial manner.
Under existing law, patent applicants have a year to file after selling, using, or disclosing their inventions. While it appears that the intent of
