by Edward Schlatter, Partner; and Benjamin Johnson, Attorney
Originally published in the July 30, 2012 edition of the Orange County Business Journal
You know that the America Invents Act (AIA) made sweeping changes to the U.S. patent system, but what opportunities does this present for a technology company? Here are five new “don’t miss” opportunities created by the AIA to secure a competitive edge in the technology marketplace.
1. Pay and Get Your Patent From the PTO Within a Year
Issued patents can be critical to obtaining funding or preventing others from exploiting your technology. Unfortunately, patents often do not issue for at least three years, a virtual eternity in a technology market.
Now, for an additional fee, prioritized examination is available to reduce the time it takes to obtain a patent to one year. So far, the Patent Office has granted over 55% of the applications filed under prioritized examination, and has done so in a remarkable average time to allowance in a remarkably fast average of six months.
2. Shield Yourself From Prior Art Through Strategic Public Disclosure
Beginning March 16, 2013, U.S. applicants no longer have the benefit of an unconditional one-year grace period to file a patent application after a public disclosure of the invention.
Rather, a one-year grace period will apply only if the patent applicant publically discloses the invention before it is disclosed by others. Thus, the initial disclosure of the invention will not bar the disclosing company from obtaining U.S. patent rights, but will bar competitors from obtaining patent protection.
3. Patent Your Invention While Still Protecting Trade Secrets
Patent applicants routinely disclose manufacturing techniques and uses for inventions even if these are unnecessary to build and use the invention defined by the patent claims. This has been done to avoid the risk of having the patent invalidated for not disclosing the best mode of practicing the invention.
Post-AIA, however, failing to disclose the best mode is no longer a basis to invalidate a patent. Accordingly, patent applicants should have the opportunity to only disclose what they believe is absolutely necessary to satisfy the best mode requirement, while maintaining nonessential manufacturing techniques and uses as trade secrets.
4. Take Advantage of Expanded Grounds To Eliminate Competitors’ Patents Without a Lawsuit
New AIA post-grant review proceedings permit a company to challenge the validity of a patent on any statutory grounds for invalidity (except best mode) within nine months of the grant of the patent. The scope of this post-grant review is much broader than previously available in reexamination proceedings, which are limited to challenges based on patents or printed publications.
5. Challenge a Competitor’s Patent before It Is Issued
When a cost/benefit analysis does not justify the cost of post-grant review, the AIA permits a company to try to prevent patent issuance of a competitor’s patent by submitting documents anonymously, along with arguments why the application should be rejected.
Conclusion
By working closely with skilled patent counsel, savvy technology companies can leverage these five new opportunities created by the AIA to secure a competitive edge in the marketplace.
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