New Patent Laws (AIA) have been bad for independent inventors and start-ups The America Invents Act (AIA) signed by President Obama in my opinion is not better for independent inventors. Here’s why. Under the America Invents Act, the U.S. patent system switched from a first-to-invent rule to a first-to-file rule. Under the first to invent rule, the person who first … [Read more...]
Bars to patentability
The bars to patentability are public use, offer for sale and printed publication. After one year from the earliest of one of these events, the inventor is barred from seeking patent protection.
Browse related articles below.
Can a confidentiality agreement protect me like a patent application?
Good question. The bottom line is that a contract (i.e., confidentiality agreement or non-disclosure agreement) and a patent application protect your interests in different ways. Hence, the recommended course of action is to do both (1) file a patent application, and (2) have the investors and licensees execute a confidentiality agreement to protect yourself. If you don't … [Read more...]
Offer for Sale – Inventor’s own purchase order invalidates patent
Startups are always worried that they might do something that will jeopardize their ability to seek patent protection for their idea or invention. One area that startups and inventors often falter is in the bars to patentability. There are three bars to patentability. They are the offer for sale, public use and the printed publication. Upon the first instance of any one … [Read more...]
File patent application prior to disclosure due to first to file rule
Inventors are not required to file a patent application before marketing their invention (i.e., product or service) to others. However, doing so is not the recommended course of action because the inventor could lose their patent rights due to the first to file rule. A third party may see the invention, make a slight modification to the invention and file a patent application. … [Read more...]
Patent Act: First to file and its exceptions
On March 16, 2013, the United States transitioned from a first to invent system to a first to file system under the America Invents Act (“Patent Act”). Inventors and businesses should consider the following aspects of the law when implementing a patent protection strategy. General rule and the exceptions Under the Patent Act, any disclosure dated prior to the filing date … [Read more...]
Public availability under the America Invents Act
Common terms under the 1952 Act and the America Invents Act The first-inventor-to-file (“FITF”) system under the America Invents Act (“AIA”) retains much of the verbiage used in the current Patent Act. For example, the FITF system retains terms such as “patented,” “printed publication,” “public use” and “on sale.” Under the FITF system, if the claimed invention was patented, … [Read more...]
First inventor to file system under the America Invents Act
First-inventor-to-file system under the America Invents Act The America Invents Act (“AIA”) was signed into law on September 16, 2011, but different parts of the America Invents Act take effect at different times. The provisions transitioning the United States from a first-to-invent system to a first-inventor-to-file system become effective March 16, 2013. However, acts of … [Read more...]
When is a document a “Printed Publication”?
The United States follows a first-to-invent rule wherein the first person to invent is awarded a patent. [Update: On or after March 13, 2016, U.S. Patent laws transitioned to a first inventor to file regime but the laws determining when a reference is a printed publication remain. Also, the first-to-invent rule still applies to some patent applications. Seek competent patent … [Read more...]