New Patent Law Is Good For Small Inventors


By Robert M. Downey

Patent law has been re-invented — and that may be a good thing for independent inventors and small businesses.

The America Invents Act (AIA) was signed by the President last year and a number of important provisions began taking effect this month. The law is being called the most significant patent legislation in nearly 60 years.

One of the biggest changes under the AIA will be a switch from the “first-to-invent” standard for awarding patents to a “first-to-file” system. This change begins on March 16, 2013. While some believe this change will favor big companies that have the staff and resources to get patent applications filed quickly, I believe it can help level the playing field by eliminating very costly and time consuming interference proceedings that are currently used to determine the right of patent award and ownership. Often, individuals and small companies are unable to afford a challenge of first inventorship against a larger company under the existing interference proceeding at the U.S. Patent Office. Now, with this new first-to-file system, deciding who should get a patent will be a much faster and simpler process at the U.S. Patent Office, and is in accordance with the laws in most other countries around the world. Independent inventors and small businesses can file less expensive provisional patent applications to secure the filing date of a patent application at the soonest possible date, which serves as a placeholder for up to 12 months, thereby securing their position under the new first-to-file system.

Another change under the AIA is a special “micro-entity” status that will benefit independent inventors by allowing a reduction of Patent Office fees by up to 75%. This “micro-entity” status is available for inventors that have fewer than 5 previous patent applications and a limited household income.

I’m encouraging my clients to file patent applications on all of their current inventions before March 16, 2013. Even if inventions are not fully developed, independent inventors and small businesses should file provisional patent applications at the soonest possible date so that they may be used for priority purposes after all of the provisions of the AIA are in full effect. After March 16, 2013, establishing the earliest possible filing date of a patent application is critical. To achieve this, we encourage our clients to file a provisional patent application in the U.S. Patent Office at the soonest possible date after conception of the invention. Additional provisional patent applications can be filed as the invention evolves and is more fully developed. A formal, non-provisional patent application can then be filed within one year from the earliest provisional patent application filing date.

After the first-to-file provisions of the AIA take effect in March, 2013, it is essentially a race to the Patent Office. Getting to the Patent Office first, by filing at least a provisional patent application, will not only prevent others from patenting what you have invented, but will also be useful to overcome potential prior art, such as published articles, and sales or use of the invention by others. In summary, the best patent strategy will be to file patent applications earlier and more often than has been done in the past.

While there are many pros and cons associated with the provisions and changes under the AIA, in general we believe the AIA goes a long way in modernizing the U.S. Patent Laws to be in harmony with the rest of the world, while providing some important benefits to small businesses and independent inventors.

Robert M. Downey practice patent, trademark, and intellectual property law with the firm of Robert M. Downey, P.A. in Boca Raton, Florida.