While the America Invents Act (AIA) brought many significant changes to the U.S. patent laws, there is arguably no more impactful change than the shift from a “first to invent” system to a “first inventor to file” system that occurred on March 16, 2013. This shift has significant effects on patent applications having an effective filing date on or after March 16, 2013. Under prior U.S. law, a patent applicant could rely on the earliest documented date of the invention, and thus obtain a patent over another’s earlier-filed application. Now, under the AIA, the U.S. Patent and Trademark Office (USPTO) will award a patent to an applicant with the earliest effective filing date. The earliest effective filing date is the actual filing date of the application or the date of the earliest priority application.
This shift in the law increases the stakes for large companies, small companies, and individual inventors seeking patent protection, as patent applicants will now find themselves racing to the U.S. patent office. It is now more paramount than ever that patent applicants evaluate and modify internal procedures to ensure that innovative ideas are identified and applications are filed as timely as practical.
A first step towards achieving the goal of timely filed patent applications is for companies to educate employees regarding this shift in U.S. law so that they understand the benefits of more rapid invention processing and the risks that delays pose for the company. Any employee whose duties involve the creation or exploitation of intellectual property should be fully aware of the risk that a competitor may prevent the company from protecting and commercializing its own invention. Other strategies for timely filing are discussed below.
Identifying Inventive Concepts
Delays can occur when individuals and groups fail to timely recognize an inventive concept worth pursuing in a patent application. Monitoring competitors’ activities can help employees identify their own advancements. Close collaboration between R&D and legal counsel can also help individuals and groups assess and capture the potential value of an idea. To address these issues, consider these approaches:
- Periodically discuss competitor activity to understand advancements and challenges in the field
- Employ in-house patent searchers who can monitor competitor patent filings
- Train inventors and managers to seek advice of IP counsel regarding new ideas
- Utilize a portal for encouraging the exchange of ideas between R&D and the company’s attorneys
- Consider filing a provisional patent application on broad concepts
Efficient Processing of Invention Disclosures
Another source of delay can occur once an invention is identified but inventors delay in completing and submitting an invention disclosure form or otherwise notifying management of a potential new invention. Techniques for promoting rapid processing of invention disclosures include:
- Monitor time spent internally completing invention disclosure forms
- Meet with engineers and other employees to discuss ease-of-use of disclosure forms and consider modifying and/or simplifying forms
- Consider prioritizing the inventions that may have more commercial value
- Create monetary or other incentives for rapid submission of invention disclosure forms
IP Committee Meetings
If a company has an existing IP committee that oversees development of the IP portfolio, consider whether it is staffed with appropriate employees from legal, management, R&D, and possibly even sales and marketing. While smaller companies may lack resources to establish a committee, at least one employee should be given responsibility for overseeing inventions through internal channels and ensuring that patent filings are completed.
- IP committees should meet regularly to discuss invention submissions
- Consider informal ways to expedite invention submission review and possible patent filings outside of regular meetings
- Develop procedures for sending incomplete or under-developed invention disclosures back to inventors for additional details, such as by scheduling a meeting between the inventors and legal counsel
Working with Legal Counsel
Depending on the size and legal budget of the company, it can be beneficial to evaluate existing procedures and time frames for filing patent applications. It is important to discuss these issues with any outside counsel to determine the appropriate course of action for each case. Possible approaches to speed the process can include:
- Assigning applications to legal counsel during IP committee meetings
- Encouraging inventors to cooperate with requests for additional information and review of drafts, such as by monetary incentives and/or performance reviews
- Contacting legal counsel at an early stage to determine whether the disclosure is complete enough to support a quickly filed provisional application
Best practices for expediting patent filings will depend on the culture and business strategy of a particular company, as well as the competitive environment that it faces. As a result, best practices for processing new inventions and filing new patent applications should be company-specific and should absolutely evolve over time. In the end, free and open lines of communication between employees of a company and its legal counsel will help the company win the race to the patent office.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.
Konstantin Linnik is a partner in Nutter’s Intellectual Property Department. He works with biotechnology and pharmaceutical companies on various matters involving intellectual property, such as IP strategy, building and ...
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Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.