Right out of the Gate, America Invents Act

Posted Wednesday, February 29, 2012.

Big changes are in store for patent seekers. These changes present new (and more difficult) challenges to inventors, especially smaller innovators.

The Leahy-Smith America Invents Act (AIA) is now law, and goes into effect on September 16, 2011. Inventors have just six months left to consider changing their strategies towards patenting their ideas. One aspect of the AIA in particular could surprise the unwary inventor.

For many decades, the U.S. was essentially the only country to follow a first-to-invent patent philosophy. First-to-invent means that the first inventor is entitled to the patent, even if another gets to the patent office first with the idea. This philosophy played well to the smaller inventor, who may not have the time or means to invest in the patent application process until it is clear to him that the idea has economic value. On the other hand, inventors with more resources could also follow this same strategy to conserve resources for only those ideas that ultimately show promise.

Under the AIA, though, the U.S. is aligning its patent philosophy to the rest of the world. The “first-inventor-to-file” philosophy gives the first application, not the first inventor, the right to patent the invention. Essentially, this means that inventors no longer have much time to evaluate whether a patentable idea is valuable for fear of another filing earlier for the same idea. Inventors with resources can adapt simply by filing their patent applications earlier and then simply abandon those that do not prove out economically.

But small inventors now are faced with a more difficult path: steer scarce resources to potentially worthless IP, or risk being frozen out of the idea by another’s patent?