2012 Issue

73 BLOCKBUSTER | continued on page 74 inventors often develop an idea for some time before filing a pat- ent application, but inventors may now want to file several patent applications at different stages of development to increase their odds of winning the patent race. The way in which the new law implements this substantial change in practice is interesting. Essentially, whichever of two competing applications is filed first can be cited against, and used to reject, any subsequently filed patent application. If two patent applications are filed claiming essentially the same invention, the first application filed will receive the patent, and any subsequent application on that invention will be rejected based on the first-filed application. Unfortunately, this would seem to disadvantage individual inven- tors and smaller companies who may lack the resources to pursue the filing of a prompt patent application on a new development as they race to the U.S. Patent Office. To somewhat counterbalance this fact, the new law also introduces dramatically reduced fees for “micro-entities,” which are individual inventors and other very small concerns that can meet certain criteria. Other possible strategies exist for patent applicants who don’t have deep pockets. Several of these possibilities follow. For those inventors who still may not have the resources to promptly and formally enter the race to the Patent Office, the new law holds out another possibility. The AIA provides that if inventors disclose their inventions publicly, then they can still file a patent application on that invention within a one-year period. If the application is filed within one-year of the public disclosure, the previous public dis- closure cannot be cited against the inventors as a reason to reject the subsequent patent application. That is not true, however, for anyone other than the inventors who made the disclosure. An example may be helpful. Let’s imagine two inventors who are working separately to develop the same invention at about the same time, Bob and Rachel. Bob is an individual engineer with few resources to pour into preparing and filing a patent application, particularly on an expedited basis. Consequently, rather than race to the patent office, Bob instead decides to make a public disclo- sure of his invention. He might do this, for example, by publishing a technical paper or article, posting the invention on a website, or presenting the invention at a conference or trade show. By pre-emptively disclosing the invention, Bob creates a potential problem for anyone who files a patent application on that inven- tion after his public disclosure. If Rachel files a patent application now, Bob’s earlier public disclosure can be used as a basis for rejecting Rachel’s patent application. Bob, however, still has a one-year period in which he can file a patent application on the invention, during which his own public disclosure cannot be cited against his patent application. By disclosing the invention first, therefore, Bob has changed the rules of the race to the Patent Office in his own favor. This will be a strategy to consider in the new first-to-file system. However, if Rachel makes her invention independent of Bob, e.g., without knowledge of Bob’s disclosure, her patent application may create a problem for Bob’s later ap- plication. Additionally, Bob may be giving up his rights to patent the invention outside of the U.S. by disclosing the invention before filing a patent application. Consequently, in the new era of racing to the Patent Office, the role of provisional patent applications will becomemore important. As an alternative strategy to that explained above, Bob could also promptly choose to file a provisional patent application for his invention, as has been the case previously. It doesn’t cost a lot of money to file a provisional patent applica- tion. The filing fee for a small business or individual inventor is only $125. The provisional patent application can be in any format and is simply a detailed description of the invention. While an attorney can be used to prepare a provisional patent application and will add value to the application, a provisional patent application can also obviously be prepared and filed by the inventor who does not have the resources to engage an attorney or patent agent. Since the provisional patent application filing is cheap and easy to complete, filing one is another way for a less-well-funded inventor to win the new race to the Patent Office. The Western Stagecoach Robbery We now turn our consideration to a hapless stagecoach carrying gold that is lumbering peacefully into a well-laid ambush. In the past, examiners at the U.S. Patent Office have examined patent applications without any help from the public at large. Commu- nication regarding the application has only been with the patent applicant, without any opportunity for anyone else to comment on the proceedings. One of the results of this is that examiners have often been criticized for allowing patents on subject matter that some felt was nothingmore than common knowledge in that field. The new AIA changes this as well. Interested parties or members of the public will now be able to ambush the patent applicant and submit information for the patent examiner to consider. The patent examiner may possibly base a rejection of the patent application on this information. At any point after the patent application has been published for six months or receiveda first rejection, but before thepatent application is allowed, any partymay submit any patent or other publication that is thought to impact the patentability of an identified patent application. It will involve a fee, of course, just like everything else at the U.S. Patent Office. However, this provides an unprecedented opportunity for competitors to get involved in each other’s patent applications. When examiners receive such a submission, they will then consider that submission and, if appropriate, may choose to base a rejection of the patent application on the documents submitted. Like the bandit in the hills who anonymously ambushes the stage coach, these submissions to the patent examiner during the pendency of a patent application can be made without reveal- ing the identity of the submitter. Clearly, competing interests will now begin monitoring the progress of each other’s patent