Spokane Journal of Business

Change in law could cause race to the patent office

U.S. system had favored first to invent; new rules give nod to first to submit

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If you're an inventor, get your racing shoes on. You're going to need to be a lot quicker to get to the U.S. patent office now than you have been in the past.

Nearly every country in the world has its own patent laws for protecting inventions and inventors.

Since its inception, U.S. patent law was based on the principle that the first person to invent something was the person who was entitled to the patent on that invention. U.S. law was known as "first to invent" and this system focused on the date the invention was made.

This system tended to favor the rights of small inventors, such as those who worked in a garage or tinkered in a basement. The first-to-invent system also provided inventors with a one-year grace period of sorts during which time an inventor could market and sell a new invention, and the law still provided an inventor the ability to seek patent protection on an invention.

An invention requires two distinct events known as conception and reduction to practice.

Conception is the creation of the idea or the "ah-ha" moment that occurs. "Reduction to practice" occurs one of two ways: making a working prototype or having enough details about the invention that those details may be communication to someone who can reproduce the invention. Both conception and reduction to practice are required before there's an invention.

In contrast, most countries have first-to-file patent laws. First to file means the first person to file a patent application on an invention is the person entitled to a patent on that invention. These laws are commonly referred to as races to the patent office.

Effective March 16, 2013, the United States changed to a first-to-file patent system.

Proponents of the new law argue that patent reform is needed to simplify the patent laws, to harmonize U.S. patent law with the patent laws of the industrialized world, and to make patents more enforceable. Further, proponents argue that patent reform will make patents more predictable, and ultimately reduce patent costs.

Opponents of the new first-to-file law have raised concerns that first to file will force inventors to race to the patent office to protect their inventions as quickly as possible, and will encourage inventors to become overly secretive with their inventions. Further, opponents of patent reform have argued that the new law favors large and international companies having significant financial resources at the expense of small inventors.

Proponents of the new first-to-file law have responded to these concerns by pointing to portions in the new law that are intended to protect small inventors and stop the figurative race.

However, because there are no authoritative court decisions interpreting the new law or its rules and procedures, many patent attorneys, including me, are advising clients to file their patent applications early and often.

An early filing date is the focus of the new patent law, and therefore obtaining an early filing date appears to be the safest method to protect inventions while there remains uncertainty of how patent reform ultimately will be interpreted.

There are winners and losers in any new legislation. At this point, the winners in patent reform appear to be large and international companies with significant resources, while the losers are small inventors who want to change the world.

Only time will tell whether patent reform achieves its intended goals.

  • Bill Jeckle

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