Questions

III. American Invents Act (AIA)

The American Invents Act has dramatically changed how the patent system operates. Here’s a brief overview of some of the changes it entails and what it means for you.

A. What does it say?
§ 102. Conditions for patentability; novelty
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

B. How will AIA change the patent application process?

1. first-to-file system
AIA favors an inventor who is first to disclose versus an inventor who is first to file. Under the first-to-file system, the first applicant to file is entitled to a patent for the invention unless the invention was derived from other people. Rights to a patent are determined by inventors who filed first, not who first conceived of the invention. To preserve and safeguard your patent rights, you should, thus, consider filing a high quality provisional patent application as soon as you can.

2. best mode disclosure
Under AIA, failure to disclose the best mode of practicing the invention will not invalidate a patent. If you are only interested in U.S. patent rights, then you should disclose the invention as soon as possible to make the disclosure prior art to all potential filers. Remember with this, you still have the option of filing patent applications within the one-year grace period.
However, in certain international countries, such disclosure can act as prior art. This may bar your subsequent patent application and destroys your patent rights. Thus, if you want international protection, the best way to gain that is to file the disclosure as a provisional application or a non-provisional application if you’ve already completed your claims. After filing that, then you can make the disclosure. Next, within one year, you can file your international applications.
If you’re thinking about using non-disclosure and confidentiality agreements to show derivation by the recipient of the information, note that it is useless against third parties. Another downside is that the derivation process can be expensive. Hence, the cheapest alternative is to file provisional or utility patent applications prior to discussing the invention with anyone.
Some people assume that with an early disclosure approach, it takes significant time to prepare a patent application. However, with ProvisionalBuilder™, you can prepare high quality applications quickly and easily. And that allows a third approach—file a provisional patent application and, at the same time or slightly thereafter, publicly disclose the invention. With this approach, you get the best of both worlds; you can prepare a high-quality, provisional patent application inexpensively that’s ready for conversion into a utility patent, and you can bar others from patenting the same invention.

C. How does AIA change when I apply for a patent?
Under prior law, use or sale outside of the United States did not necessarily invalidate a patent. However, under AIA, if the invention is otherwise made available to the public or on sale before the effective filing date of a patent application anywhere in the world that can be used by the USPTO to reject an application. However, such disclosure isn’t applicable if it was made less than one year before filing the patent application, and the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor.
Thus, if a second patent application filer publicly disclosed the subject matter before the first inventor filed a patent application, then the second filer can use the earlier public disclosure to overcome a USPTO rejection. He/she can use his/her public disclosure as prior art against the first inventor’s patent application.
AIA promotes pre-filing disclosure because the grace period is only available for those who publicly disclose the invention before filing. When an inventor makes the first public disclosure of an invention, public disclosures and patent applications filed by others for the same invention are not considered prior art for one year after that public disclosure. Therefore, by making the first public disclosure of the invention, the first-to-disclose inventor gets:

• a one year grace period in which you can file your application without the USPTO using your own public disclosure against you, and
• the ability to block the benefits of others who are the first-to-file because your earlier public disclosure bars later application even if others were the first-to-file.

D. Is AIA good or bad for me?
Initial findings about AIA’s effect on individual inventors aren’t so great. David Abrams and Polk Wagner, both law professors at the University of Pennsylvania, researched whether the change from a first-to-invent to a first-to-file regime is likely to disadvantage individual inventors in their paper “Priority Rules: An Empirical Exploration of First- to-Invent Versus First-to-File.” They found a significant drop in the number of patents granted to small inventors in Canada coincided with the implementation of first-to-file. The concern is that well financed and IP savvy corporations will have an easier time than an individual when quickly drafting and filing a patent application.

IV. How to Start the Utility Patent Application Process

The process for applying for a patent is known as patent prosecution. Here are some things you should do before starting the application process.

A. Document the invention process.
While you can use electronic records as inventor’s notebooks, the golden standard is still a bound notebook with consecutively numbered pages. You use this inventor’s notebook to detail when you envisioned your invention and when you started constructing it.
This is important because inventor’s notebooks, along with corroborating evidence, have been central in proving who was first to invent. Even with the first-to-file system, inventor notebooks are still important to show derivation.
A typical lab notebook will include such items as:

• a description of the invention;
• testing and results;
• prior art research; and
• drawings of the invention.

After each entry you make in the notebook, be sure to insert the date you made the entry and sign it. Entries should be chronological, and made as soon as you complete each step of the invention process.
Separate print-outs, photos and other documents should be permanently pasted into the notebook. You should also write a caption describing what the document is, along with dating and signing it.
Additionally, be sure to have a trusted witness sign each entry you make in the notebook. Again, this is helpful if someone brings suit. Though you only need one witness, it’s preferable to have at least two just in case one is unavailable to testify later at trial if that’s necessary. The witness should be knowledgeable about the invention’s field because he/she must testify that he/she understands what’s written in the notebook.
It is recommended that witnesses also sign a confidentiality agreement prior to reading your notebook. This may help protect the trade secrets in your notebook as long as you meet the statutory requirements, which were discussed previously, to prove the notebook contains trade secrets.
In the Congressional Record dated March 3, 2011, Congress said inventors can file a provisional patent application to bypass some of the issues associated with the inventor’s notebook. This application has the same function as the inventor’s notebook because it requires an invention’s description, including what the invention is and how it works. It is also a dated government document so one cannot easily tamper with it. Furthermore, this does away with expensive discovery if a claim is later challenged.

B. Search for prior art.
A patent search can be beneficial at various stages of the inventing process. An initial patent search at the time of conception and formulation of an idea helps you assess the depth and extent others took in solving similar problems. Moreover, for brainstorming, the patent search can help refine your idea and stimulate further inventive thinking. Furthermore, a comprehensive awareness of the prior art can aid you when you draft claims. You’ll learn how to write claims with the appropriate scope so you can obtain patents that are as broad as possible, yet defensible.
To search for prior art, sometimes known as a patentability search, you can go directly to the USPTO office in Alexandria, the USPTO’s patent and trademark depository libraries nationwide, or visit online databases.

1. Professional patent researcher
If you don’t want to research yourself, you can hire professional patent researchers, such as a patent attorney or agent. One advantage of hiring a professional is that he/she understands the concept of novelty and obvious so he/she may do more thorough research than a non-professional.

a. what to give the researcher
Before preforming a patentability search, a researcher needs to know about your invention so if he/she is not a patent attorney or agent, have him/her sign a confidentiality agreement. If you’re working with a patent attorney or agent, this is not necessary because your conversations with him/her are already considered confidential under the law.
Next, provide your researcher a description of the invention, including what makes it novel, drawings, an idea of what classes to search, and applicable deadlines. If you provide your researcher with your inventor’s notebook, be sure to protect yourself by only providing a copy and redacting any dates in this copy of the notebook.

b. what to expect from the researcher
After the researcher is finished, he/she will usually tell you what they found, including what classes and subclasses he/she searched, and patents and references he/she discovered. If you are working with a patent attorney or agent, he/she will also provide his/her opinion about the patentability of your invention.

2. DIY patent research

a. start with the USPTO’s research system
It’s best to visit a USPTO research facility. The one in Alexandria, Virginia is preferred because its computers have the Exam Assisted Searching Tool (EAST) and you can talk directly with examiners and other staffers, who are there to assist researchers. EAST is a free tool, though you have to pay for printing. With EAST, you can search via class or subclass, Boolean or keyword terms, or a combination of both.
You can visit a Patent and Trademark Depository Library as well. These are located in major cities. The USPTO’s website lists where they are and their hours of operation. These do not have EAST but have the Web-based Examiner Search Tool (WEST). The libraries also do not have information related to foreign patents or non-patent materials, such as journals.
If those aren’t options, you can also start with an online or patent database search. The USPTO, European Patent Office and Google, for example, offer this service for free and there are other fee-based search tools. Though the records here may not go as far back as EAST, the databases are oftentimes easier to navigate

b. narrow down your search terms


Become familiar enough with your patent application, including the abstract, specification and claims, so you can come up with Boolean search terms and the classification that best describes the nature of your invention. These search terms need to be thorough and exact in order for you to find patents already in the USPTO’s system, so coming up with synonyms may be helpful. The USPTO website can also help you navigate the myriad of classifications. It can take some trial and error to figure out exactly what you’re searching for and how to find it.

3. Research holes
Though you may believe your search to be good, whether you do it yourself or hire a professional, it is probably not as in depth as what a patent examiner will do. For example, that’s because:

• you won’t find pending applications that aren’t published,
• there’s erroneous patent classification in the databases that can’t be discovered via keyword searches,
• recently issued patents won’t be in the system immediately, or
• U.S. patent searches won’t bring up foreign patents.

C. How to deal with multiple inventors.
When you have co-inventors or joint inventors, all of you share patent ownership. To qualify as such, each inventor must’ve contributed to an idea that became a part of at least one of the invention’s claims. You must have a concept of the invention as a complete and definite whole, as well.
You are not a co-inventor if you come late to the project and the others have already formed a complete, though scientifically uncertain, concept of the invention. If that’s the case, you only help clear up the scientific uncertainty.

1. how to prove joint inventors
Each inventor should have his/her own inventor’s notebook. You don’t need to all work together, at the same time or at the same place, however.

2. legal issues

a. patent application fails to list an inventor
If the patent applicant does not list an inventor intentionally, the USPTO may strike down any resulting patent rights or limit what rights the applicant can enforce.

b. dividing revenue
It is up to the inventors to decide how to split any joint revenue. There are some basic rules, however.

• If trying to assign all patent rights somewhere, all joint owners must agree on the assignment. Hence, one inventor can’t assign all patent rights by him/herself.
• Any one inventor can use, make or sell the invention without permission from the others or paying them.

3. how to protect inventors

a. Consultant’s Agreement
If someone is just assisting the inventor, he/she should sign a Consultant’s Agreement. This agreement means the person assigns all of his/her rights to the invention to the inventor.

b. Joint Ownership Agreement (JOA)
A JOA can prevent problems resulting from shared finances, such as who owns which financial shares to the invention. A JOA typically:

• Prevents one inventor from exploiting the patent without the others’ consent. Though a majority of the inventors can act if all of them cannot reach a unanimous agreement;
• Includes a method for resolving disputes;
• Includes details about how to divide any revenue, which is usually proportional to expenses incurred by each inventor; and
• Guides the course of action when one inventor wants to manufacture and sell the invention, including how to divide royalties.

Joint ownership
As earlier noted, joint inventors can claim joint ownership because each inventor owns an equal share to the invention and its patents. You can also achieve joint ownership via:

• assignment to an investor who has helped with the invention process,
• assignment to a partnership, or
• through the patent owner’s will.

D. How to deal with employers.
If inventing is part of your job, then you may be obligated to transfer your invention rights to your employer. To determine if this is your situation, look at whether:

• You signed an employment agreement prior to the invention. Sometimes this is known as a preinvention agreement. The agreement usually contains a provision in which you surrendered your invention rights. This can include inventions you create in your spare time or at home so read this carefully;
• You were hired or employed specifically to invent. Under U.S. Supreme Court precedent, your employer doesn’t even need to have you sign a separate agreement for this;
• Your employer acquired shop right, which is a nontransferable, limited patent right to use the invention for his/her own use and for business purposes only. To claim this, you must’ve used your employer’s resources, such as time or supplies, to create the invention; or
• You work for a college or university, and you’ve granted the school rights to all inventions you make when you use its resources.

1. what your employer may require
If you are associated with an employer, he/she may require you to divulge all of your inventions so he/she will know what’s worth patenting or assigning. Your employer may also have you sign a power of attorney so he/she can file a patent without your help or if you leave the company. Furthermore, your employer may request that you testify or keep good records of your invention process even after you leave.

2. what you may get in return
In return for your invention, an employer may reward you via a salary bonus, he/she may set up a subsidiary entity that is partially owned by you so you can also gain from your invention, or your employer might give you a certain percentage of your invention’s royalties.

3. if your employer isn’t interested
If you’ve told your employer about your invention and he/she isn’t interested in it, you can apply for a release. A release is a document that has the employer return the invention back to you.

Statutory protections for employees
Preinvention agreements are sometimes regulated by state governments so they aren’t grossly unfair to you. In particular, California, Delaware, Illinois, Kansas, Minnesota, North Carolina, Utah and Washington have specific statutes dealing with these agreements.