March 16th, 2013 will see the US embrace a more internationally standard patenting system: first to file (America Invents Act, or AIA). In fact literally every other country uses first to file as opposed to the US first to invent, kind of like that rational system of measuring things in tens rather than inches, feet, and miles the US continues to drag its feet on accepting. Mark your calendars if you haven’t already, it certainly has the potential to change domestic IP strategies. A first to file system theoretically implies that the paperwork and disclosures now supersede the proverbial muse. A few specifics rule changes are worth noting, alongside some speculation as to the general pros and cons of abolishing first to invent.
There are a few spots of interest in the new system. One of the more crucial elements is the importance of disclosures. Professionally announcing a new innovation, be it via a company website, a trade show, or a press release would constitute a disclosure recognized under the AIA. The first to file rule in the US grants the disclosure date significant sway, allocating a full year grace period in which to submit the appropriate paperwork. This would mean that, even if a company A files prior to company B, if company A discloses first they retain that grace period in which to organize their application. The Canadian patenting rules function quite similarly in this regard, with disclosures offering a one year grace period.
Third Party Assignees
Another interesting note is the relaxing of third party filings. Recent releases from the patenting office state a number of important changes under the AIA, one of which describes the potential for third party filings. The third party filing altercation was released in July 2012 and will be in effect on September 16th, 2012. The full rules can be found here, but in short will allow the inventor to delegate a certain portion of the paperwork much more directly to a third party. This should eliminate some of the legal barriers for small inventors, but will of course necessitate a certain amount of capital.
While it’s not necessary to elaborate on the obvious here, a global economy generally benefits from parallel systems. Different IP rules between a business’s domestic environment and its international environment is a needless complication. The AIA strongly resembles Canadian first to file system, namely with the incorporation of disclosures and grace periods discussed above. Disclosing an invention without filing for international patents in places like the EU or Japan can become complicated, creating an inherent IP threat. Namely, if a competitor notes the disclosure, develops the patent themselves, and submits it to other international governments prior, they may see the ruling in their favor as the first inventor. International integration of systems, while on the right track, should be considered thoroughly despite the change towards first to file.
The more speculative element of all of this approaches the fundamental reason for IP in the first place, that being whether inventors are more equally treated under the new system. An idealist might hope that transitioning to a new system is a result of isolating flaws in the old ones, particularly as they pertain to promoting and protecting innovation.
There are mixed ideas on this, some stating that the individual inventors are losing out due to the more concrete hurdles while others argue in favor of first to file simplicity and concrete evidence of who was legally first. Filing a provisional patent is far from free even if you write it yourself, pile on lawyer fees and it’s a fairly reasonable conclusion that the small inventors encounter a barrier to entry. On the other hand, first to invent innately lacks clarity. At what point is an invention invented? Has all the evidence of the invention timeline been properly documented and ordered? The word "invent" is less conclusive than "file," underlining why the rest of the world prefers it.
For US companies, put the paperwork first from here on out. Filing patents as soon as possible is more important than ever, as the dangers of leveraging the grace period internationally pose global IP risks. Entrepreneurs and independent inventors, it might be reasonable to follow up this article with a few resources on how best to word your patents for the application process. Inventing it first this time next year just won’t cut it, and paying others to draft and submit it for you is money better spent on production and marketing. Still, despite the potential barrier for small scale innovators, getting on board with the rest of the world strikes me as the most rational approach.