If you've got a patent in your future, you definitely don't want to drag your feet.
That's because on March 16, in a third wave of legislative changes stemming from the America Invents Act of 2011, the U.S. patent system officially morphed from a first-to-invent model to a first-to-file model. As part of switch the concept of prior art has been expanded to include any kind of publication by somebody else before you file your patent.
What It Means
In essence, there could be more obstacles that can block you from getting a patent.
As a result, according to Ed Walsh, a shareholder in the Boston-based IP law firm Wolf Greenfield & Sacks, in most cases it's going to be to your advantage to get the patent application on file as soon as possible.
"I know that that's not necessarily what small businesses want to hear because that means spending money sooner than you would like to, but there's really not a lot of great options," he says. "Otherwise you can try to rely on secrecy--keeping your idea under wraps, staying in stealth mode. But by the time you start wanting to release your ideas it's really to your advantage to have at least a provisional application on file."
What's Different Now
While the message isn't radically different than the advice he would have given a year ago under the old rules, he says the difference is there's a greater risk today that you'll be barred from getting a patent if you wait to file.
For one thing, if anybody puts an idea into the public domain in any way--even a day before you file--you're going to have trouble.
"If somebody else files a patent before you do, then that blocks you. Even if somebody else files a patent in a foreign country and later that same patent application gets filed in the U.S., the filing in the foreign country sets the date on which that patent application blocks you. So now you have an entire world full of people filing patent applications that can potentially block you from getting a patent in the U.S.," Walsh says.
To learn about other AIA rule changes, check out my previous story: New Patent Rules: What You Need to Know. Or for more information, visit the USPTO, which has dedicated an entire section of its website to the new rules.