Recent Changes in the US Patent
System Affecting Engineers
Peter D. Mlynek, MBA, PhD, Esq.
2012 May 1
Overview of this presentation
• Overview of patent system
• Overview of the new patent law
• How it effects you
New Patent Law:
America Invents Act
• Biggest change to the Patent Law since 1952
• Signed into law on September 16, 2011
– Rolling out over 18 months
• Many different changes
– This presentation concentrates on the most
relevant to this audience, and not necessarily the
most legally important changes
Given Reasons for America Invents Act
•
•
•
•
Improve quality of patents
Harmonization with other patent systems
Increase certainty in litigation
Update in view of court holdings, technology
What is a Patent?
Full Disclosure of an Invention
Exclusive Right
Exclusive Right to…
Competitors
What is a Patent?
Monopolistic Tool
Capital Raising Tool
Marketing Tool
Cross Licensing Tool
A tool to make money
How Much to Get a U.S. Patent?
Process of Getting a Patent
Draft
Reduction to Practice
Application
Conception
Licensing
PTO
Prosecution
Why so much to get a patent?
Drafting
Maintenance
Filing
Issue
Prosecution
How Can We Get a Patent Cheaper?
Pay less to
the USPTO
Pay less for
patent lawyer
Drafting
Maintenance
Filing
Issue
Prosecution
How Can We Get a Patent Cheaper?
Pay less for the Patent Lawyer
• Reality: There are no economies of scale!
- A patent for a small company costs just as much as for
a large company
• Have all necessary information for lawyer ready
- Business plan, marketing, etc.
- Experimental data, procedures, etc.
• Smaller law firm – big firms charge big bucks
• Flat fee
How Can We Get a Patent Cheaper?
Discounts at the US Patent Office
Introduced
by AIA
+
Big Businesses
Small Businesses
“Small Entity”
Regular Price
for USPTO fees
–50%
Individual Inventors
AND
Universities
“Micro Entity”
–75%
Speaking of Patent Office Fees…
Introduced
by AIA
Historically
$
PTO
Recently
…, but the Congress
sets the fees
PTO can set
their fees as
it sees fit!
Result:
DRASTIC fee
price increases
Requirements to Obtain a Patent
Useful
Described
New
Not Obvious
Requirements to Obtain a Patent
Useful
Generally, a low hurdle to
overcome in cases of
electrical engineering and
computer hardware
inventions.
Questions about
patentability with
respect to usefulness
come up in
- Biological technology
- Computer programs
- Finance
AIA: Tax strategies are no longer patentable;
Human organism is not patentable
Requirements to Obtain a Patent
The patent applicant
must describe the
invention in order to
get rights to it
-Description
-Enablement
-Best Mode
Unique to the US
Described
Still need to put Best Mode
into the application.
AIA: Best mode needs to be in the patent,
but if it is not there, the patent is still OK
Requirements to Obtain a Patent
If it is not new, then it is not patentable.
If some else has a patent on it, then it is not patentable.
The AIA rewrote
the entire law on
this requirement.
New
Requirements to Obtain a Patent
• Is the invention obvious over what is known?
• The MOST difficult of the 4 requirements
– 60-80% of attorney’s time during prosecution
• Mostly unchanged by AIA
Not Obvious
Comparison of Patent Systems
First to File
First inventor
Patent Office
Whoever invents first,
generally wins the patent
Treatment of Disclosures
Publications
First to File
NEW
OLD
Publications prior to
filing are held against
the filer
First Inventor to File
Publications by others
prior to filing, and own
publications > 1yr
before filing, are held
against the filer
First inventor
Publications > 1yr
before filing are held
against the filer
Scenario
Treatment of Disclosures
1
Disclosure of
Invention
Application
Filed
5/2013
5/2014
Disclosure is prior art, no patent
NEW
OLD
Disclosure is prior art, no patent
Disclosure is prior art, no patent
Scenario
Treatment of Disclosures
2
Disclosure
by Filer
5/2013
Application
Filed
5/2014
Disclosure is prior art, no patent
NEW
Disclosure is not prior art
OLD
Disclosure is not prior art
Scenario
Treatment of Disclosures
3
Application
Filed
5/2013
Disclosure
by Another
5/2014
Disclosure is prior art, no patent
NEW
Disclosure is prior art, no patent
OLD
Disclosure is not prior art
Scenario
Treatment of Disclosures
4
Disclosure
by Filer
5/2013
Disclosure
by Another
Application
Filed
5/2014
Disclosure is prior art, no patent
NEW
Disclosure is not prior art
OLD
Disclosure is not prior art
Treatment of Competing Filings
Scenario
A files an
5
application
B files an
application
A wins
But not everything is lost for
NEW
A wins
OLD
First inventor wins
3 strategies for
B
B!
Treatment of Competing Filings
Scenario
A files an
5
application
B files an
application
B
A wins
A
NEW
A wins
OLD
First inventor wins
Treatment of Competing Filings
Scenario
A files an
5
application
B files an
application
NEW
OLD
B wins if A derived the invention from B
First inventor wins
Treatment of Competing Filings
Scenario
A files an
5
5/2013
application
Disclosure by B
5/2014
B files an
application
Disclosure is prior art,
no patent for anyone
NEW
OLD
B wins
First inventor wins
Recommendations
• File a patent application before any public
disclosure to prevent loss of rights outside US
• Publish frequently and often if non-US rights
are not important
• Keep track of competitors
• File patent applications early and often
Additional Changes
Patent pending
Patent in force
Federal Courts
More $$$
Within the PTO
• Changes in Third Party submissions during pendency of
the application
• New: Supplemental Examination by the patent owner
• New: Post Grant Review
Additional Changes
Patent pending
Patent in force
Federal Courts
More $$$
Within the PTO
• Changes in Third
Party submissions during pendency of
Recommendation:
the application
Keep track of competitor’s applications
• New: Supplemental Examination by the patent owner
and patents in view of disclosures.
• New: Post Grant Review
Additional Changes: Patent Markings
Competitors
Additional Changes: Patent Markings
Unlawful restriction of trade if
products are marked as patented, but
there is no valid patent
Deceptive,
anti-competitive
Competitors
Additional Changes: Patent Markings
$$$
Deceptive,
anti-competitive
• Old law: Anyone can sue ($500/mismarked
item) and split it 1:1 with the government
Additional Changes: Patent Markings
$ 10,800,000,000,000.00
• Old law: Anyone can sue ($500/mismarked
item) and split it 1:1 with the government
• AIA: only those who are hurt can sue for
compensatory damages, plus U.S. gov’t
Additional Changes:
Virtual Patent Markings
• Old: “Pat.” and numbers
– Dozens or hundreds may be listed
• New: “Pat.” and URL
Filings by Assignee
• An employer
now can easier
file a patent
application on
behalf of an
employee
inventor, or an
ex-employee
inventor
Peter D. Mlynek, Ph.D., MBA, Esq.
peter@mlyneklaw.com
856-787-0880