5 Things to Do Before the New Patent Law Takes Full Effect


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what you have completed as of early 2013. There are a couple of reasons: One, this application may be sufficient to support some claims that prove valuable down the road; and two, under a truly bizarre portion of the AIA, such an app may entitle you (depending on what the courts do) to use pre-AIA interferences against others that claim the same or similar inventions. In general, when speaking with your patent attorney, do not forget to discuss filing on those inventions not quite completed yet.

—Get ready to file early and often.

Once the AIA takes full effect, particularly the first-to-file provisions, generally speaking, speed to Patent Office will paramount. This is not only to prevent others from patenting what you’ve invented, but to overcome potential prior art, like articles that are published and sales and uses of the invention by others in the marketplace. Thus, winning the patent game will depend on filing patent applications earlier and more often than today. Also, the PTO is likely to increase filing fees even further. So it’s important to start budgeting now for what most will find a more costly world.

While these are the five most important things to do now, there are many other actions inventors and tech companies can take to prepare for the new act. I would not rely solely on your patent lawyer to let you know about the AIA, as the pitfalls and loopholes are many, and only those studying the act very carefully will know about them.

So educate yourself. For other action items, take one of the many courses being offered on the AIA (e.g., the Practising Law Institute’s’s course, Prior Art, Obviousness, and the America Invents Act in 2012).

As perhaps usual in this field, what was meant to streamline filing, lower costs, and create tech jobs, may ultimately make filing more complex, raise costs, and create jobs only for patent lawyers. But preparing wisely will make the landing much softer.

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Ted Sichelman is an associate professor of law at the University of San Diego School of Law, where his work has focused on intellectual property, entrepreneurship, and other areas. He previously was a practicing attorney. He also founded a venture-backed software company. Follow @

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