The New Race to the Patent Office

If you have a new invention or process that you want to protect, be sure to understand the steps you must now take to secure patent protection.

Small businesses are highly creative and, according to the SBA, small businesses produced 16 times more patents per employee than large patenting firms. But a new law that took effect on March 16, 2013, impacts the way in which small businesses can protect their creations.

What's the same?
In order to gain patent protection, an intellectual property right granted by the federal government, you must file for it in the U.S. Patent and Trademark Office.

Patent protection runs 14 years or 20 years, depending upon the type of patent. For a design patent (granted for a new, original, and ornamental design for an article of manufacture), the period is 14 years from the date the patent is granted. For utility patents (granted for any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement) and plant patents (granted for asexually reproducing any distinct and new variety of plant), the period is 20 years from the date the patent is applied for.

Patent protection does not extend beyond the U.S. unless you also obtain patent protection in other countries. This is advisable if you plan to manufacture or market your patented products in certain locations (e.g., China). Consider using the Patent Cooperation Treaty (PCT), which is an international agreement for filing patent applications in many countries around the world. The PCT system does not provide for the grant of an international patent, but it simplifies the application process.

The patent process continues to be lengthy and expensive. Expect to spend thousands of dollars to secure your rights.

What's new?
In the past, it was up to inventors to prove that they were the first to invent the item (first-to-invent rule). In other words, the date of conception was key. The Leahy-Smith America Invents Act of 2001 (AIA) changed this rule.

Now, it's just like miners in 1849 running to the land office to stake their claim. Effective this past March, the new rule is now based on the first to file a claim in the U.S. Patent and Trademark Office (first-to-file rule). Waiting to file a claim can result in someone else getting there before you.

Another important change is the use of prior art in the patent process. Prior art means that the invention was described in a printed publication, in public use, for sale, or otherwise available to the public anywhere in the world before the effective filing date for the patent (the date that the patent application is submitted to the U.S. Patent and Trademark Office). A patent will not be granted if there is prior art. View a video about the prior art rule.

However, there are some exceptions to the prior art rule. For example, disclosures no more than a year before the effective filing date by the inventor, co-inventor, or anyone who obtained the information from them are not considered to be prior art. Thus, if you publish an article on June 1, 2013, about your invention, it would not be considered prior art (and prevent you from receiving a patent) if you have an effective filing date by May 31, 2014. View a video about exceptions to the prior art rule.

Option: You can still file a provisional claim to establish your rights as the inventor. A provisional application costs less than a non-provisional patent application, and can help investors establish an earlier filing date. This gives you an opportunity to see whether your invention is marketable before you invest the money to perfect a patent application. If you decide to proceed with the patent process, you must do so within a year of your provisional filing date.

Always use the help of a patent attorney to proceed with your application. Find more information about patents in general and the patent process from the U.S. Patent and Trademark Office.


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