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Patent: First to File

When it comes to claiming rights over patentable technology, the United States recently joined the rest of the world in adopting a "first to file" system. This change, part of the sweeping America Invents Act ("AIA"), went into effect March 16, 2013. As many have noted, the law significantly impacted the way intellectual property is protected. Under the new system, even if an inventor is the first to invent something, she must quickly file a patent application on her invention before anyone else files or could lose out to an inventor who thought of the idea after her, but filed before her. Thus, the new federal legislation creates a risk for those who are silent or secretive about their invention-and encourages inventors not to sit on their rights.

As an example, if Inventor A invents something in February and files a patent application in June, but Inventor B invents a substantially similar invention in April and files a patent application in May, Inventor B would establish patent rights over Inventor A. Prior to 2013, Inventor A, who was the first to invent, would have had superior rights to the invention under the discontinued "first to invent" system.

Filing for a patent can be costly and confusing, but legislation in the U.S. has included a special rule to help inventors. The rule states that if you disclose an invention (such as at a convention or on a blog) you have a one-year grace period to file a patent for it.

The issue of disclosure is tricky, however. Disclosure may be important for you to commercialize and monetize the technology to be able to pay for the cost of the patent and otherwise profit. At the same time, disclosure could also harm your chance of getting patents in other countries, because many countries do not have this grace period. Many countries require that you file for patent protection before making any public disclosure. In other words, if you share your invention at a trade show prior to filing a patent application, you still have one year to seek protection in the U.S. but, you would not be able to protect your invention from, for example, an Australian who learns about it and seeks to market a substantially similar product in Australia.

The new changes of the AIA mean that if you are an inventor, consulting with a patent attorney prior to any public disclosure is a prudent move. You'll want to act quickly in order to protect your legal rights. During your invention process and even afterward, be sure to keep notes and records of your invention, limit the access that others have to your invention, and, also have non-disclosure agreements with any person to whom disclosure is necessary. Your attorney may ask questions about the facts in order to help you establish your rights to the invention and prepare to file a patent application.

To discuss a specific invention or patent, contact the experienced intellectual property lawyers at MYERS BERSTEIN LLPtoday.

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