You have undoubtably read about how The America Invents Actchanges patent law and practice in the U.S. Now you are left to figure out what your company should do to implement the changes. Do you need to do anything? Will it matter?
Yes, it will. Let’s look at some real steps you can take to protect your technology.
Review your internal procedures for capturing potential inventions. How do you solicit and record new technologies from your employees, contractors, consultants and joint ventures? Do your policies encourage employees to report new ideas? Is there an incentive for doing so? Good written or electronic records will provide the necessary evidence in terms of both substance and timeline in order to put your company in the best position to take advantage of derivation proceedings and the prior user defense. Use inventor journals to record and document research; regularly have them witnessed and dated.
Review or create an intellectual property protection program, including employee policies and agreements, to convey ownership of patents and copyrights to the employer confidentiality agreements and trade secret protection measures. Mark documents confidential, use computer passwords and other electronic security measures and educate your employees on the expectation and importance of confidentiality.
The AIA enhances the importance of confidentiality agreements and supports trade secret protection. Take this opportunity to review and update your confidentiality and nondisclosure agreements. Educate your employees to put greater emphasis on Confidentiality Agreements. Emphasize to them that it’s not about distrust, but to protect patent rights. They tend not to use them when they “trust” the other person to whom disclosure is made.
When signing confidentiality agreements presented by others, read them carefully to understand all of the provisions, such as whether there are restrictions like non-use and non-competes. These seem like such common documents that people often do not always take the time to appreciate the promises and burdens they are undertaking.
Use this opportunity to review and update your consultant contracts and joint development agreements to clarify technology ownership issues in view of changes to patent law novelty/prior art/obviousness scope
When doing prior art searches, expand your search to as many major global sources of prior art and relevant activities.
Actively monitor applications and patents in your key technology areas
You may want to use a patent watch service or monitor weekly USPTO publications (Tuesdays for issued patents and Thursdays for patent applications).
Proactively evaluate your technology areas to determine if there are some areas where “defensive publication” or intentional disclosure is the best or most cost-effective strategy. For example, you should consider defensive publication when foreign filing is unnecessary or limited. You will want to publish to prevent competition if you are not able or do not want to invest in a patent.
For key technologies, file provisional patent applications early to establish prior art dates. Be conservative and file provisional patent applications before all public disclosures or any sales of the technology embodied in or used in the manufacturing of a product. When it is available, it is best to include experimental data that can demonstrate your knowledge of the metes and bounds of the invention. Remember, as tempting as it is might be to keep some portions secret, you must disclose ALL of the technology for the patent to be enforceable.
When you file nonprovisional patent applications, use the Fast Track option if you need a speedy process and can afford it the extra few thousand dollars.
Develop a website for virtual patent marking. This will enhance your ability to collect damages from potential infringes. It will also help manage against false marking claims. However, do NOT mark products as patented when they are not.
Proceed conservatively. Any prior art exception for inventor disclosure and derivation claim should be narrowly construed – precisely the same invention(even minor variations are likely to be problematic until the law is interpreted over time). Be sure that you file new provisional applications on even slight variations of the technology. Conservative practice will ensure that the company can benefit from derivation proceedings and will not be subject to prior art rejections, especially under Section 103 obviousness. The new 102 exception or grace period for inventor disclosures will likely be narrowly construed to cover the exact invention only and may not extend to non-disclosed variations, no matter how minor they may be. The same narrow construction is likely to apply in derivation proceedings. There is no concept in the new law of “derivation-in-part” for situations where the original invention is modified or improved on by someone else. Protection is likely to be accorded only for the exact version of the invention that was disclosed or shared with the other party.
Lastly, organize your patent portfolio data. This will also help minimize the chance of missed maintenance fee payments.
Our firm can help you with these strategies to implement and benefit from the new patent laws. Call our office if you would like to discuss your situation in detail. We can help customize a technology protection strategy that helps your business profit from its most important and valuable assets.
Provisional patent applications have value but it’s not always what the people who write them think it is. A provisional patent give the applicant one...