File early and file often.
Now that Congress has passed the America Invents Act, that’s the advice from patent attorney Chuck Burpee, chair of the Technology and Intellectual Property Group at Warner Norcross & Judd.
This long-awaited patent reform legislation, which President Obama has promised to sign soon, has three key elements that inventors and patent attorneys alike must keep in mind, Burpee says.
First, patents will be awarded based on who files first, not on who actually came up with the invention. “That means it’s so much more important to file early and to file again as you improve the invention,” Burpee said.
The U.S. Patent and Trademark Office (PTO) will no longer spend time and resources to determine who came up with an idea. Basically, the new law says he who files first, wins.
Second, the America Invents Act makes it easier to challenge patents and patent applications, both by creating additional avenues to attack a patent and by creating a window of challenge. Within nine months of issuing a patent, the PTO will allow challenges on any grounds. This is expected to work in favor of companies or individuals with significant financial resources.
More than ever before, inventors will have to closely monitor what their competition is doing and file challenges when appropriate, Burpee advises.
Finally, it’s disappointing that Congress still has not allowed the PTO to keep all of the fees paid by inventors and other users, Burpee says. “The PTO will continue to be underfunded, and obtaining a patent will still be a slow and sometimes frustrating endeavor,” he said.
That’s because Congress has refused to stop taking a chunk of the money the PTO collects in fees and use it for unrelated purposes.
In fact, additional procedures provided in the reforms amount to unfunded mandates on the PTO, Burpee says. This amounts to a “tax” on inventors who pursue patents, which seems nonsensical in a country that professes to foster innovation and intellectual property.
“We should be encouraging inventors,” Burpee says. “They are the job creators.”