A makeover in the works for patent law

In 2013, the U.S. Patent and Trademark Office will begin to implement the America Invents Act. The 2011 law is the biggest change to patent law in decades, partly because it changes one of the key criteria for awarding a patent.

Starting March 16, the United States will move to a “first to file” system. That means the inventor who first submits his application to the USPTO wins a potential dispute over who can claim priority.

The U.S. previously used a “first to invent” system, which required patent examiners to try to determine who had first made a discovery or perfected an invention.

In making the change, the U.S. joins most other countries in using the first to file criteria. It also provides inventors and investors with confidence the intellectual property crucial to their company really does belong to them.

“It will probably help everybody that the first person to file is the winner,” said Curtis Vock, an intellectual property lawyer at the Boulder office of Lathrop & Gage.

In theory, the change will lead to fewer lawsuits, as no one has to dispute something as hazy as when an idea crossed the threshold of being novel, non-obvious and useful, the three criteria patent applications are judged by.

“You have to essentially litigate to decide who wins” under the first-to-invent system, Vock said.

The law also gives some much needed resources — like money — to the patent office, said Michael Drapkin, an IP lawyer at Holland & Hart’s Boulder office.

Previously, fees collected by the USPTO could be diverted elsewhere, which contributed to a backlog that maxed out at 750,000 applications.

“You can already see the backlog coming down quite substantially,” Drapkin said. The backlog stood at 608,000 through September, according to the USPTO.

The law also has provisions that lower fees and could streamline the litigation process, Drapkin said.

The America Invents Act could have some drawbacks, although it will take time for their magnitude to be evident, Vock said.

One already clear: Small inventors who might not be familiar with the patent process could lose the race to the office to companies with IP specialists, Vock said. New provisions in disputing patents also look to be overly influenced by big companies and slanted against the little guy.

“It’s going to be very difficult for small companies to get a patent if a big company doesn’t want you to,” Vock said.

But a modern, more efficient and better-staffed patent office should benefit everyone in the long run. The average length of time it takes for the office to approve or issue a final rejection is now 32 months. The office’s goal is to lower that to 20 months by 2015.

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