Is your business ready for “first-to-file” on March 16?

On March 16, 2013, the biggest change in patent law in decades will take effect.  On that day, patent law officially changes from “first-to-invent”---where first inventors are entitled to patent an innovation, to “first-to-file”---where the first to get to the patent office obtains the patent, regardless of whether he or she was the first to invent it.

Small and mid-size businesses will face unique challenges in this new landscape, particularly when competing in industries with larger companies who have bigger intellectual property budgets, and more experience pursuing, obtaining, and enforcing patents. Importantly, several strategies can address or even pre-empt these challenges.

First and foremost, file a provisional patent application for your innovation. Provisional applications are “baby” patent applications. They are inexpensive compared to full-blown patent applications and establish a first filing before the USPTO, allowing you to win the race against competition for good. These applications are placeholders, allowing you one year to market test and determine whether strategic objectives and revenues justify the costs of full-blown patent pursuit.
Second, consider “noisy market entry.” Under this strategy, as early as possible, you date and announce innovation in detail through publications, journals, websites, etc.  Although not failsafe, this strategy may block a competitor from getting a patent (due to “prior art”) or allow you to continue use (under “the prior commercial use” defense) even if the competitor obtains a patent. The downside is that full and early public disclosure may alert everyone to your activity before you have had a chance to secure market share. If going public is not a viable option, you should at least make sure to keep internal, detailed and dated records of innovation, as doing so may allow you, in certain and limited circumstances, to continue using the innovation under the prior commercial use defense.

Third, monitor your competition’s patent applications closely. Given the new incentives to rush to the patent office, it will be very important to keep a close eye on what your competition is doing. If another’s application on your innovation can be discovered early enough, there are cost-effective mechanisms to attack it.