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Navigating through the changes in the new U.S. patent law

Posted: 21 Sep 2011 ?? ?Print Version ?Bookmark and Share

Keywords:patent law? patent system? intellectual property?

The new patent reform bill will post significant changes to the U.S. patent system. Understanding how these changes will affect intellectual property strategies and practices that have developed over the years will help inventors and patentees navigate the patent law shifts.

Exactly how the new law will impact any particular patent-owner is largely dependent on the nature of the patentee's technology, its business model and the competitive and patent landscape. It is clear, though, that anyone filing or litigating patents should carefully re-evaluate their IP strategy to make the most of the upcoming changes.

First to file
The most significant change is the adoption of the first-to-file standard in place of the first-to-invent standard for determining whether an applicant is entitled to a claim for an invention. The first-to-invent standard awards a patent to whoever is the first to file a patent application disclosing the invention, as long as the invention was not sold or disclosed by someone else any time previously, or by the inventor more than one year before the filing date.

Understanding the new U.S. patent law
Mike McLean, VP for intellectual property rights and professional services at UBM TechInsights, also gave his own viewpoint on how to navigate the new U.S. patent law. Read more on McLean's viewpoint here.

In contrast, the first-to-invent standard awarded a patent to whoever could establish the earliest inventorship, and required consideration of a complex set of rules and case law involving prior art categories, reduction to practice, conception, due diligence and interference practice.

Several consequences flow from the adoption of first-to-file. First, maintenance of detailed lab notebooks becomes less important for establishment of priority, although they will still be useful in the new patent-derivation actions and as a defense to accusations of trade secret misappropriation. Second, companies should be more wary of disclosing an invention to others before a patent application has been filed, unless a strong non-disclosure agreement is in placepreferably one that provides contract remedies if the other party races to the patent office with your invention.

Third, it is more important than ever to file patent applications quickly, even if this means filing an application on an unproven concept, or an application with a less fully-developed disclosure than has been done in the past. And, finally, companies will likely make greater use of provisional applications to avoid large increases in patent costs arising from such additional patent applications on unproven inventions.

Best mode
The Act also eliminates the best mode requirement, which required inventors to disclose the best mode of carrying out an invention. In the past, failure to make such disclosure would invalidate claims directed to that invention.

This seemingly simple requirement created much confusion. Court rulings were inconsistent regarding what aspects of an invention were subject to the best mode requirement and how much detail must be disclosed.

Eliminating the best mode requirement reduces the import of the classic tradeoff between patents and trade secrets. Previously, patentees had to choose patent protection or trade secret protection for an invention. They could not have both, because obtaining patent coverage required publicly disclosing the best mode.

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