Are You Ready for the Race to the Patent Office?

On March 13, 2013, under the America Invents Act, the United States patent system will change from a “first to invent” to a “first inventor to file” system. This represents a dramatic shift in approach because when a patent application is filed becomes critical, as opposed to when the invention was conceived or reduced to practice. 

While it is a significant change for US patent law, it harmonizes US law with most other patent systems around the world.

Under the new law, if you are seeking patent protection you should file a patent application (if even only a provisional one) as early as possible. You should do this even before any public use or attempt to commercialize the products embodying such inventions.

ON YOUR MARK-------- GET SET-----------------GO!

But, wait a minute. Before you rush off to file a patent application and start the sometimes expensive process of patent prosecution, make sure you have a business strategy and understand why the patent is relevant to that strategy.

Here are some lessons learned from a lawyer who has practiced intellectual property law for over 25 years (me). Be strategic and targeted in how you invest in the development and protection of your intellectual property.

• Not all patents are alike.

• Under the rule of deformation professionnelle, most patent lawyers will find something patentable in your invention.

• Patents are the gift that keeps on taking (through patent prosecution and maintenance fees).

• Patents do not give you the right to do anything except to prohibit others from doing something.

• Copyright, trademark, trade secrets, and contracts/licensing are often equally important elements in any well-developed IP strategy.

So, as you get ready to rush off to the United States Patent and Trademark Office with your application, take a deep breath and make sure that you have a business strategy that includes all forms of intellectual property and that this patent application fits within your plan.

Then again, you might have something as valuable as the Snake Walker, Motorized Ice Cream Cone, Sealed Crustless Sandwich, Gerbil Display Clothing, or Baby Tush Art.  If you have any invention like these, run--don’t walk--to your nearest patent lawyer’s office and get that application filed before someone else beats you to the punch...