Tag Archives: patents

A Practical Response to the New Patent Law for Small to Mid-Sized Companies

Companies and inventors will have to develop new systems for tracking their newly developed products and methods and for documenting them to the Patent Office. On September 16, 2011, the “America Invents Act” became our patent law. The system that, since the Patent Act of 1839, had allowed U.S. inventors great flexibility in publishing technical data and selling products before they had to file a patent application was swept away.

Small to mid-sized companies can respond to the change in the patent regime to maintain their intellectual property rights competitive position by using new strategies in preparing and filing provisional patent applications.

Novelty of an invention is a requirement for patentability under both the old and new laws. However, the definition of novelty is now quite different. Under the old law, an invention did not cease to be novel until one year after the invention was offered for sale, published by the inventor, published by someone else independently, or publicly used. This one year term was referred to as the “grace period.”

The grace period has been largely eliminated by the new law. An invention may still be novel if an inventor makes a public disclosure before filing a patent application. Rules relating to the effect on novelty of publications by others or of sales by the inventor prior to filing a patent application are not crystal clear. It will probably take the courts several years to formulate clear, consistent rules. However, if an inventor files a patent application first, the publication or the sale does not affect patentability.

It is prohibitively expensive and impractical to file a non-provisional patent application on each invention before its potential is known. Fortunately, it is not necessary. The patent law permits filing of provisional patent applications. These documents do not have formal requirements. The filing fee is low. It will be about $125.00 for a small company or individual after the Patent Office adds its new surcharge to current fees.

Provisional applications must disclose the subject matter for which the inventor desires to establish a filing date. This can usually achieved by preparing the provisional patent application as a technical paper. The inventor can write this paper in order to minimize costs. However, it is very important to consult technically qualified counsel. Inventors are often so knowledgeable that they will skip steps in the description. They can also make assumptions that need to be spelled out in a description. If details are left out, the entire purpose of the provisional patent application can be defeated.

Many strategies for cost-effective use of provisional patent applications can be developed. For example, more than one invention may be included in one provisional application. A whole system may be described, and it will not be necessary to separate descriptions of interrelated inventions in the system. Updated versions of provisional applications may be filed periodically.

While the ability to file freely may remain a dream for those who are not IBM or Microsoft, wise use of provisional patent applications will keep small to mid-sized companies in the game.

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New Supreme Court Opinion Strengthens Patents

In Microsoft Corp. v. I4I Limited Partnership, Case No. 10–290, the Supreme Court rejected Microsoft’s attempt to make patents more difficult and expensive to enforce. The Court did this by reinforcing the principal that clear and convincing evidence is necessary to invalidate a patent. 

A patent must be valid to be enforceable. Section 282 of Title 35 of the United States Code states, “A patent shall be presumed valid.” Therefore, if the Patent Office has decided that the invention is patentable, this decision should not be overruled unless the evidence against patentability is  “clear and convincing.” The decision of the Patent Office is entitled to deference because it has examined the patent application and, in its expertise, has judged that the patent application was worthy of issuance as a patent.

However, problems arise when the accused infringer presents evidence that the Patent Office did not consider. Should the clear and convincing standard disappear? Is the decision of the Patent Office now suspect? Should a lower level of evidence now be required to show that the patent is invalid?

The Supreme Court said “No” to these questions.  New evidence presented to the Patent Office must be considered. It will be given more significance than evidence already considered. However, the “clear and convincing” standard remains in place.

This is important for a number of reasons.  A patent defense attorney can virtually always find prior publications related to patentability  that were not considered by the Patent Office. The defense  will insist that the new evidence is material and that it renders the original decision of the Patent Office meaningless. Because the “clear and convincing” evidentiary standard must be met, the cost for the accused infringer to prove its case is higher. Also, the patentee faces a lower bar to demonstrate that the accused infringer’s arguments of invalidity are inadequate. This translates into a cost saving for the patentee.

These considerations are very significant when an infringement suit begins. A great deal of legal maneuvering occurs early on, perhaps years before a case is in a posture for trial. This Supreme Court decision will be helpful to a patentee who is formulating a legal and financial strategy for a suit.