Patent Race: Move Fast or You're Screwed
Andrew Eye began to panic in March. He had until the 16th of the month to file a patent application for Taskbox, the email-management app his company launched last June. "We're in a highly competitive space with a lot of folks working on the same problem," says Eye. He made it to the patent office with two days to spare. "I wanted credit for the date our inventions were created."
Eye wasn't the only inventor racing to file a patent. On March 16, U.S. patent law switched from a first-to-invent to a first-to-file system under the Leahy-Smith America Invents Act, or AIA, which President Obama signed into law in September 2011. Under the old system, if you could prove--using lab notes and witness testimony--you were the first to invent a product, you would win the patent.
Now, patents go to the first entity to file an application. They will also be judged against international inventions, not just those created in the U.S. It's great news--if you have an in-house patent department. If not, you'll have to change your strategy.
Search globally. The AIA makes it imperative for you to search international patent databases to determine if your invention is new. Two good options are the World Intellectual Property Organization's Patentscope and the European Patent Office's website.
Apply provisionally. If your invention is novel, consider filing a provisional application, which will hold your patent for a year. There are several advantages to doing so. Small entities--those with fewer than 500 employees--will pay just $130 to file a provisional application, compared with $800 for a full application, which includes search and examination fees.
Provisional applications also require less information. But be careful not to treat it as a rough draft, warns Ryan McCarthy, a patent attorney at Fish & Richardson in Austin. If the provisional form does not support claims you make later on, it will be easier for rivals and the patent office to challenge you, McCarthy says. Also, keep in mind that once you file a provisional application, you must submit a full one within a year.
Share cautiously. Confidentiality agreements are more important under the new patent law, says Bob Steinberg, an intellectual property attorney at Latham & Watkins in Los Angeles.
Under the new rules, if you publicly disclose an invention--to an investor, say, or the press--you have one year to file a patent application or risk losing your rights to it. "Many small entities are not as careful as they should be," Steinberg says.
File thriftily. There is some good news. Under the AIA, if you have fewer than four patent applications on record, you will qualify as a microentity and pay $400 to file a full application, half as much as a small entity. But filing fees are negligible compared with the cost of hiring a lawyer to prepare an application, which can run as high as $10,000.
Strapped for cash? Rocket Lawyer offers a free step-by-step online guide for preparing a provisional application and can connect you with patent lawyers at discount prices. Even better, the U.S. Patent and Trademark Office is setting up pro bono patent assistance centers across the country.