How Changes In The Patent Office May Affect Your Business

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By Manali V. Dighe (Intellectual Property Attorney, Borton Petrini) Patents are integral for innovation. On the one hand, patents promote disclosure of new and useful inventions. On the other hand, as a "payment" for disclosure, the patent owner gets the exclusive right to make, use, sell, or offer to sell the invention. Patent law will be experiencing arguably its biggest reform to date.

On September 16, 2011, President Obama signed a landmark patent reform act, the America Invents Act. Some changes will go into effect immediately, and some will go into effect 12 or 18 months from the date of enactment.

One of the biggest changes is a shift from the first-to-invent system to the first-to-file system. Right now, patent owners can "pre-date" their filing date with evidence showing prior invention (i.e., dated lab notes, etc.) prior to the application’s actual filing date. As such, under the current system, a patent may be awarded to an inventor who is first to invent even though the application was not the first application filed in the Patent Office for that invention. Eighteen months from now, however, the inventor who wins the race to file the first application will be awarded the patent regardless of the date of the invention.

What does this mean for those wishing to obtain a patent on their invention? The answer is it depends. If the invention is in the "predictable" arts (i.e., mechanical engineering, electrical engineering, software, or business methods), then it is likely important for the inventor to file an application as early as possible. For example, if your company is making a new type of pour spout, you should file an application as soon as possible.

If, however, the invention is in the "unpredictable" arts (i.e., biotechnology), then a fine line exists. The application should be filed as soon as possible, but any application that is filed needs to have sufficient disclosure to meet written description and enablement requirements. As such, the inventor is faced with a conundrum - wait to file the application, until, for example, in vivo data is obtained, or file the application right away, with, for example, only in vitro data.

One approach to this enigma is to file multiple provisional applications related to the same invention. Every time significant data is obtained, another provisional application derived from the prior should be filed. The resulting non-provisional application can be a cumulation of the provisional applications. For example, if your invention is directed to an Internet technology, it would likely be very important to file the application as soon as possible.

Another big change is a pre-grant patent application review procedure. A third party can submit prior art to the Patent Office at certain times during the prosecution of a patent application. This provides businesses with the opportunity to block certain patent applications, for example, that they may be potentially infringing if issued. Accordingly, businesses should create some sort of monitoring systems that alert them to the existence of pending patent application publications relevant to their businesses.

I am an experienced patent and trademark attorney. I write and prosecute software, business method, biotechnology, mechanical, chemical, and medical device patent applications, as well as file and prosecute trademark applications. If you are a woman entrepreneur and would like to know what, if any, potential intellectual property rights your company’s products and/or services may be protected by, please call me for a free consultation and discounted IP services.

Editor's note: Got a question for our guest blogger? Leave a message in the comments below. About the guest blogger: Manali V. Dighe is an intellectual property attorney at Borton Petrini, LLP. She also worked in the business world as a technical sales specialist. Manali is a registered patent attorney with the United States Patent & Trademark Office. She holds a B.S. in Microbiology & Molecular Genetics from UCLA, a M.S. in Biochemistry & Molecular Biology from USC, and a J.D. from Loyola Law School. You can reach her at mdighe@bortonpetrini.com; (310) 663-5100; or (415) 677-0730.