New patent laws enact changes on proving the ownership of an idea

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Innovators aren't sure how recent changes to U.S. patent laws will affect future businesses, but they are certain of this: The race to the patent office is officially on.

Guidelines involving virtual patents, reversed filing priorities and new methods to defend against patent infringement all went into effect March 16 under the newly implemented 2011 Leahy-Smith America Invents Act. While some say the changes update laws in ways that fall in line with the rest of the world, others argue that they give a distinct advantage to any party that has the cash to file nonstop patents.

The revision that has most patent attorneys scrambling is a reversal of laws regarding who holds the right to an idea once a patent is filed. In the past, an innovator who could prove he or she was the "first to invent" an idea could claim rights to a patented idea, even if someone else filed the patent first.

Under the new law, the "first to file" has priority as the patent holder unless another party can prove the idea was stolen.

During a time when technology has accelerated innovation across all sectors, some intellectual property attorneys are advising clients to file patents first, then hash out their actual ideas later.

"You need to have a strategy in place by which to identify your ideas and make them defined early on so you can get the race to the patent office on right away, or protect yourself from people trying to patent your idea," said Justin McCabe, an intellectual property attorney with Burlington, Vt.,-based law firm Dunkiel Saunders.

One strategy is to file a provisional patent, which protects ideas for a calendar year, as soon as an idea is conceived.

Kathleen Kuznicki, head of intellectual property at Cranberry-based Lynch Weiss LLC., said provisional patents give small firms the opportunity to hold exclusive rights to their idea simultaneously and to shop it around the commercial market to see if it's worth a full patent. Additionally, provisional patents cost hundreds of dollars while the full-patent process can cost more than $1,000 and usually requires retaining an attorney.

However, Mr. McCabe said this tactic can give the upper hand to large corporations that can file patents at will and prevent smaller companies from commercializing technologies that may never be fully developed.

"Companies can come up with an idea and file the patent on day one. Then they can keep filing patents until they describe the idea fully. A startup isn't going to have the money or the time to do this," he said.

One provision working in favor of small businesses is the clause reducing filing fees for small entities, and the newly established category of "micro entities."

Small entities, which are businesses with less than 500 employees, receive a 50 percent fee reduction and micro entities will receive a 75 percent break. Micro entities must qualify for small entity status, and have a gross income less than three times the national median household income for the previous year or must have assigned the patent to a college or university.

For those who find their million-dollar idea patented by someone else, there is additional recourse. The new law allows the challenging party to file for a post-grant review within nine months of the patent's filing date.

Reviews will be granted for filings if the challenging party can prove the patent is "more likely than not" invalid. Also, an expanded definition of "prior commercial use" allows someone challenging a patent to submit evidence that he or she used a certain process, machine, manufactured item or compound while attempting to commercialize the invention at least one year before the patent was filed.

Another feature in favor of inventors is the idea of virtually marketing patents. An inventor can mark their product or documents of their idea with the word "patent" followed by an Internet address linking to the item's patent number, in order to let others know the item is protected.

In light of the new rules, both Mr. McCabe and Ms. Kuznicki are telling clients to make concerted efforts to present their ideas and inventions to the public even if they haven't filed for a patent.

Mr. McCabe said inventors can use documents and other records of marketing efforts to show specific times and dates when their work has been presented to the public and, conversely, when someone would have had the opportunity to steal them.

Ms. Kuznicki said it's still too early to tell how the law will ultimately affect businesses small and large, but there's one surefire way for all organizations to protect themselves.

"My new mantra in this system is to file early and file often," she said.

legalnews

Deborah M. Todd: dtodd@post-gazette.com or 412-263-1652.


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