One important collaboration of creativity and the law not often addressed on this forum is the protection of inventions. Design patents may be granted for new ornamental or industrial design features of a product. Utility patents may be granted for new and useful processes, machines, manufactures, chemicals, materials, or improvements thereof.
On September 16, 2011, the President signed into law the America Invents Act, which included sweeping reforms to the U.S. patent system. One of the most impactful changes to patent law as a result of the America Invents Act is trashing the U.S.’s unique “first inventor to file” system in favor of a “first to file” system similar to Europe’s system. The rationale behind this change was harmonization in a growing global economy, and allegedly to streamline the process.
I’ll try to explain the differences between these two systems briefly. Say David invents a widget in March 2011 but waits until December 2011 to file an application , but unbeknownst to him Goliath Company filed an application for the widget in September 2011 (applications aren’t published until 18 months after filing). Mark and John (employees of Goliath) invented the widget in July 2011. Under the “first inventor to file” system, David’s application prevails over Goliath’s. Under the “first to file” system, Goliath’s prevails. The new system creates a race to the Patent Office.
Anything filed prior to March 16, 2013 will be considered under the old laws, and anything filed on or after March 16, 2013 will be considered under the new laws. This is a rare case where an attorney (and the patent examiner at the Patent Office) will have to be mindful to apply the correct law.
Under the current “first inventor to file” system, the following disclosures could prevent a patent from being granted to an applicant:
- Prior to the invention date, any granted patent, published patent application, other publication, knowledge or use by others
- More than one year before the effective filing date, any patent, printed publication , offer for sale or public use (including by the inventors)
- Another’s patent or published application that was published after, but filed before,the invention date (except if assigned to the same entity)
However, under the new “first to file” system, the following disclosures can prevent a patent from being granted to an applicant
- Patents, published applications, other printed non-patent publications, offers for sale, public uses or other public knowledge before the effective filing date of the application EXCEPT a disclosure made < 1 year before the filing date by an inventor or another who obtained it directly or indirectly from inventor, or inventor publicly disclosed before other’s disclosure
- Patents or published patent applications naming another inventor which were published after, but filed before, the effective filing date of the application EXCEPT subject matter was obtained directly or indirectly from inventor, inventor publicly disclosed before the filing date of the patent or published application, or owned by the same entity (or subject to an assignment) as of the effective filing date
And this was supposed to be simpler – yowza. What’s “subject matter”? What’s “directly or indirectly from the inventor?” There are several new terms here that courts will have to sort out.
Great, Martha, but why should a marketer care? As of March 16, 2013, these changes to U.S. patent law will impact the marketing of inventions and new products, including perhaps a stronger collaboration between R&D and Marketing departments. Prior to the change in the law, any public disclosure prior to the filing date was undesirable. Now R&D may want to get Marketing more involved in disclosing its inventions within a year of filing in order to establish an early date. Marketing materials may have to be more technical in order to provide an adequate disclosure, and if earlier than the filing date, may have to list each inventor. Maybe even a separate webpage is desirable for these disclosures. An internet disclosure by Goliath Company that is the same as Mark & John’s patent application may be prior art to David, who files an application with the same disclosure. A disclosure by Goliath that is broader than Goliath’s patent application may be prior art to the application. Since patent applications are not published more than 18 months before filing, it may be a company’s policy to publish the filed application on the website immediately after filing. More companies may want to make technical disclosures on the internet as a defensive mechanism to prevent their competitors from getting patent rights. The disclosure dance will be something to watch over the coming years, and there will be a lot of experimentation with different strategies. We’ll be keeping an eye on this.