New Best Patent Practices

Eight months ago, the largest patent law reform in generations was delivered by the Leahy-Smith America Invents Act (“AIA”). Various aspects are being phased in overtime. Patent practitioners and businesses alike continue to discuss impact and new best practices, such as:

(1)Intellectual-property asset management under the new “first-to-file” rule. On March 16, 2013, rights will no longer go to the “first-to-invent” (as previous), but rather to the “first-to-file” for patent protection. Importantly, prior art may still prevent a patent from issuing to the person who was “first-to-file.” New best practices for businesses include: 

• Deciding early whether patent protection is part of your business model;
• If patent protection is part of the business model, filing early and filing often (preferably using a provisional application to manage costs until after more market information is received); and
• If patent protection is not part of the business model, publishing the product or technology early and often to clearly establish that it is prior art, thereby barring others from obtaining rights.

(2)New mechanisms to challenge competitors’ patent applications before they issue.  The AIA expands the chessboard by allowing third-parties time to research and anonymously submit prior art documents to the USPTO in order to thwart the issuance of patents to others. New best practices include:

• Monitoring competitor’s patent applications, particularly at end-stages of the process;
• Considering the submission of prior art and comments to prevent patent issuance; and
• Conducting thorough prior art searches prior to patent application in order to anticipate and address potential challenges by third parties.

(3)Expedited review of patent applications. The AIA provides for expedited examination of patent applications with payment of $4,800 (or $2,400 for small entities). Initial feedback is that the expedited examination is not meeting expectations. For the time being, new best practices include foregoing payment of the fee and continuing in patience.