Take a Proactive Approach to Patents in View of Patent Reform

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The U.S. Patent Act defines the circumstances in which the federal government may issue patents.  Until recently, our patent laws had not been significantly updated since 1952, the year that patents were issued for the PEZ dispenser, Mr. Potato Head and the earliest bar code scanner.   Technology has changed dramatically since then, and the patent office is now processing applications in areas such as biotechnology and software that didn't exist at that time.  Patent filings have increased 10-fold and the patent office has struggled to keep up with the flood of applications.

In September of 2011, President Obama signed the Leahy-Smith America Invents Act, putting in motion a seismic shift in our patent laws with changes intended to better tailor the system to today's technology.

On March 16, 2013, the most significant changes go into effect, marking a change from a "first to invent" to a "first to file" system.  Previously, a patent would be awarded to the first person to invent regardless of whether they were the first to file a patent application.  The new provisions switch to a first to file system in which the patent is awarded to the person who wins the race to the patent office.

What do these changes mean for companies seeking patents?  First, it may be advantageous to file applications prior to the March 16 change in order to have the benefits of the first to invent system. It may also be a good idea to use provisional patent applications to hedge your bets.  Provisional patent applications have few formal requirements, are relatively inexpensive, and give you a year to make a decision about patent protection.  You may want to work with a patent attorney to develop a patent strategy tailored to your company's specific needs.