Z. Peter Sawicki & James L. Young 2014-01-29 23:46:52
U.S. PATENTS – File Early and File Often! Mr. Sawicki & Mr. Young are shareholders at Westman, Champlin & Koehler. Pete & Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clearance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans, and to provide customized and effective strategies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki call (612) 330- 0581 or James L. Young at (612) 330-0495. Please email them directly at psawicki@wck. com or email@example.com. There have been a host of changes to U.S. patent law over the last few years, via legislative action, multinational treaty adoption and, of course, court decisions. While that all may be very interesting in the blogosphere of patent scholars and law school professors, what does all this change mean on a practical level, for you as a business lawyer? More importantly, what does all this change mean for your client who has inventions to protect? With respect to protecting your client’s inventions with patents, the short and sweet answer is to “file early and file often” (patent applications, that is). There are many reasons to take early action to protect your client’s inventions, but in view of all the recent changes in U.S. patent law, the most significant revision that drives this “file early and file often” strategy is the America Invents Act (AIA). The AIA changed the United States from a first-to-invent patent system to a first-inventor-to-file patent system. For any U.S. patent that issues claiming subject matter that was first disclosed in a patent application filed on or after March 16, 2013, the patent is awarded to the first inventor to file a patent application with the U.S. Patent & Trademark Office, which may not necessarily be the first person to invent. So, it is now a race to the Patent Office, and the first one there is likely to be awarded the patent (short of any of the usual fraud-like shenanigans). The most efficient and economical way for a client to implement this first-to-file strategy will be to file a series of U.S. provisional patent applications as the invention evolves. Within one year of the filing of each provisional patent application, a U.S. non-provisional patent application (i.e., utility patent application) can then be filed. Alternatively, within one year of filing the first such provisional patent application, the disclosures of all of the provisional patent applications can be combined and filed as one U.S. non-provisional patent application. The filing of one or more provisional patent applications is an attractive option because there are fewer formalities involved in their proportion and presentation to the U.S. Patent & Trademark Office. However, it is still critical that the invention disclosure of each provisional patent application be an enabling disclosure, meaning that it includes enough detail to fully support whatever patent claims are later presented for examination in the United States based upon that disclosure. Other recent and significant changes and events in the U.S. patent law realm include: • The enactment of the Patent Law Treaties Implementation Act of 2012 (to implement the Patent Law Treaty of 2000) – modifying patent filing procedures and maintenance provisions. • The 2013 Myriad Genetics decision by the U.S. Supreme Court – holding that a naturally occurring DNA segment does not become eligible for patent protection merely by virtue of being “isolated” (but that a patent may be awarded for an invention related to DNA copied from a naturally occurring messenger RNA from which the introns have been removed). But, really, does your typical business client really care about this? • The 2010 Bilski decision by the U.S. Supreme Court – rejecting the CAFC’s “machine or transformation” go-to test for determining whether a process constituted patentable subject matter (the Court, of course, leftit unclear as to what analysis should be used to make such a determination) • The slumping U.S. economy and job market from 2008-2012 (It’s the economy, stupid.) • The continued emergence of China as a source of manufactured goods and, accordingly, as a possible venue for patent infringement actions (if your client has patent protection in China). • The continually improved efficiencies attained by the U.S. Patent & Trademark Office in patent examination quality and speed (it’s true, in this instance, your federal government actually seems to be getting more efficient). • The Innovation Act of 2013 – one of several congressional attempts intended to curb abusive patent litigation practices by non-practicing patent-owner entities (aka patent trolls). Our patent law is in the midst of big changes in statute, regulation, interpretation and practice. Patent attorneys everywhere are squirming with delight, consternation or confusion at all this change. How best to help your business client navigate this and protect its inventions? Hustle that client off to speak to a patent lawyer – and the sooner the better. Yes – we know – this message is coming from two patent lawyers and sounds very self-serving! But it is what it is. Under our new law, the best practices strategy for protecting a client’s invention is to get a patent application properly prepared and on file with the U.S. Patent and Trademark Office as soon as possible. When it comes to patent filing, the new mantra is: “File Early and File Often.”
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