The change from First to Invent to First Inventor to File under the America Invents Act (AIA) has significant implications for inventors who are not prepared. Under the new regime, priority is given to the first inventor to file a patent application. Those unprepared to move quickly will be placed at a significant disadvantage.
Under the AIA, an inventor’s early filing date defeats any disclosure by a third party prior to the inventor’s filing date as prior art. There are two major exceptions to this general rule: a third party disclosure within one year of the applicant’s filing date does not count as prior art if either (1) the inventor had already disclosed the invention prior to the third party disclosure or (2) the third party disclosure was somehow derived from the inventor.
If the invention is made available to the public or on sale before the effective filing date of a patent application, such acts will destroy the inventor’s patent rights. In the US, the "public disclosure" must be a "publication"—that is, in writing, and can include publications in books, technical journals, poster sessions, slides, lectures, seminars open to the public, and letters. Outside of the US, any written or oral disclosure may count as a "public disclosure" unless covered under an NDA, depending on the country.
Fortunately for American inventors, the US system provides a one year grace period as long as such acts were done less than one year before the filing of the patent application and the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor (i.e., derivation). Interestingly, the AIA provides that a pre-filing disclosure by the inventor may provide intellectual property (IP) rights in much the same way that a provisional application establishes a priority date.
The act of publishing the invention sets the publication date as the prior art date against subsequent patent application. Additionally, such publication allows an applicant to get a year of temporary protection with virtually no expense and without losing patent term. However, one downside of using the pre-filing disclosure as a means to protect your invention is that the technique depends on the American one year grace period, and the technique would wipe out your rights abroad.
In contrast, you can file a provisional with a small filing fee, and protect your rights globally if you file international applications within the one year period. Thus, while it is best to file a professional quality utility, if you are on a budget, provisional apps offer great protection at a very low cost. That said, your protection is only as good as the details you disclose in the provisional application. Since the provisional application will need to be converted into a utility application within a year, we recommend that you prepare the provisional application as thoroughly as possible and preferably in the same format as a utility.
We have found that novice patent writers tend to spend too much time on patent searching rather than drafting a description of their invention, when the writers should spend more time on writing the description of the inventions. Thus, we developed ProvisionalBuilder® to help investors protect their invention. The software simply asks you to document your invention as a disclosure, and as you enter information, highly targeted similar patent samples are provided to show how professionals prepare patent applications.
While such patent samples are not provided as a “prior art search,” sometimes the patent is very close to the invention, and in such cases, the drafter can add more distinguishing details, or abandon the effort altogether. We have seen users draft professional grade patent applications using ProvisionalBuilder, and we are excited that the software has helped the inventor community in securing patent rights quickly and with high quality in response to the requirements of the AIA. With ProvisionalBuilder, inventors have a tool to help them fight against the one thing they don’t have: time.
Need to know more about patents? Download our "To Patent or Not to Patent" whitepaper.