What the new patent reform laws mean to inventors with invention ideas
On Thursday, September 8th, 2011 the Senate passed the America Invents Act which dramatically amends U.S. patent laws for the first time in over 60 years. President Obama is expected to sign the bill into law soon. Unfortunately, the new law contains 152 pages of legal jargon that may cause confusion for small time inventors with brand new invention ideas.
In this article, we will explore some of the major modifications the new law will make and how they impact inventors just like you.
Higher Fees for Start-up Inventors
If you are a sole inventor with a small business, the new patent laws will likely be hitting you in the pocket book while putting you at a distinct disadvantage compared to the rest of corporate America. First, the USPTO will now have the authority to add a fifteen percent increase to a variety of existing patent fees. Second, smaller businesses, particularly those in their infant stages, may not have the capital needed to hire a patent attorney who can quickly file a patent application on their invention.
Patent Trolling
The American Invents Act should also help to reduce patent trolling. Patent trolls are individuals that come up with an idea, document it, and then sit on the idea without bothering to file a patent. The patent troll than lies in wait until an inventor comes along with the same idea. Unbeknownst to the new inventor, there is no record of a previous patent ever being filed so they go ahead and file for their own patent. The patent troll then comes along, pulls out the previous (non patented) documented idea that they have, and sues the bewildered inventor for a profit. Now, under the new law, patent trolls that wait to file a patent application may risk losing their patent rights to an inventor that came up with the same idea, only later, but filed the patent first.
Post-Grant Reviews
Individuals or companies that want to challenge a patent (on any grounds) that was just issued to another inventor or company will now only have nine months to do so. This is a completely new rule to the current patent law. However, the challenger must show, “more likely than not”, that at least one of the challenged claims is unpatentable. The challenger can provide a broad array of evidence to support their claim including patents, printed publications, commercials sales, or public use prior to the effective filing date of the patent being challenged.
Regardless, it will still be up to the USPTO to determine whether or not a post grant review will be allowed or not. In addition, whatever decision is made, this will be a final decision which cannot be appealed.
Inter Partes Reviews
After the post grant review time period has expired, patents can now only be challenged if the third party challenger presents “previous patents” or “printed publications”. This is a much narrower definition of the evidence that can be presented compared to post-grant reviews (described above). Under inter partes reviews, the challenger must show, “more likely than not”, that at least one of the patent’s claims is unpatentable due to either a previous patent or printed publication only. Under the previous law, a challenger merely had to show a “substantial new question of patentability”.
Filing on Behalf of an Employee
Under the old law, if you were an inventor that created an invention on behalf of a company but you decided that you didn’t want to sign the invention patent application, you could create all sorts of headaches for your employer. However under the new law, your company can file a patent application regardless if you decide to cooperate or not.
Best Mode Requirement
The America Invents Act will also change the “best mode requirement”. The best mode requirement in terms of patents can be thought of in two parts: First, it refers to a person that has a specific skill set in relation to an invention. In other words if a mechanical engineer looked at a patent that has been filed that describes how to build a new type of blender, then the engineer could do so without having to experiment. Second, this same skilled individual could not only build the blender but can also use the blender based upon the information in the patent without having to experiment. Pretty straightforward, huh? When patents fail to fully disclose how to build a device and how to use the device then they are in violation of the “best mode requirement”.
Well, the new law will no longer merely invalidate a patent if the inventor fails to meet the “best mode requirement”. However, this doesn’t mean that an individual that files for a patent should not fully disclose the best mode requirement in how to make or use the product that they are patenting. Regardless, we’ll just have to wait and see how the USPTO is going to in force this one.
False Marking
Putting the word “patented” or words such as “patent applied for” or “patent pending” on an invention in order to deceive the public when, in fact, a patent was never filed in the first place is called “false marking”. New reforms to the America Invents Act will significantly reduce the number of false marking suits by individuals or companies. Surprisingly, a large majority of false marking suits are brought by companies or entities that have NOT suffered any sort of injury from an invention being falsely marked. Many of these companies or entities file false marking cases because, if they win, the offender will have to pay up to $500 per offense. In addition, in cases where an inventor marked that their invention was “patented” but their patent had previously expired will now no longer be liable for false marking. Hopefully, this new rule will cause the backlog of false marking cases at the USPTO to be dismissed.
Conclusion
There are numerous other changes that will be made to U.S. patent laws once this bill is signed into law. If you would like to read the entire 152 page bill via the USPTO’s website click here. As you can see, how to patent an idea just became a lot more complicated. Our advice, especially for new inventors that have just come up with an invention idea, is to speak with a patent attorney as soon as possible. Sure, it may cost you some money up front but it will likely also save you not only your time but, perhaps, also your invention idea.
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