Important Changes to Patent Laws

Corporate Law Update

Date: January 16, 2013


Corporate counsel need to be aware of upcoming changes to U.S. patent laws that will have a significant impact on these important corporate assets. Companies should consider acting on currently planned patent applications by March 15, 2013 if they fall into any of the following categories:

  1. An existing U.S. provisional patent application that was filed bare-bones and must be formalized and/or supplemented.
  2. An existing U.S. non-provisional patent application that requires new matter to be added.
  3. An invention disclosure that must be filed as a new U.S. provisional or non-provisional patent application.

Here's why timely action is needed: The U.S. patent laws will again change on March 16, 2013. These changes, along with those made previously, will generally make patenting more challenging.

In a nutshell, the changes will:

  • Make the United States a first-to-file country, awarding priority to the inventor who is first to file his/her patent application, not who is first to invent (as is currently the law).
  • Greatly expand the body of outside references available to cite against an application, giving the patent examiner more "prior art" to apply in rejecting an inventor's patent application as not new or as obvious.
  • Limit the inventor's immune period for his/her own work, giving the patent examiner more ability to use the inventor's own sales, publications and/or offers to sell to reject the inventor's patent application as not new or as obvious.
  • Give competitors an easier forum to attack an issued patent, providing a window of opportunity for competitors to challenge the validity of an issued patent in a quicker and less expensive administrative proceeding, compared to a longer and more expensive court proceeding.

Patents are valuable competitive business tools that can be expensive to obtain, maintain and enforce. Acting before the law changes may increase your competitive ability to obtain a patent and limit your cost and uncertainty in what is already a challenging process.

This summary is not meant to be exhaustive, and the ramifications of these and prior changes cannot be fully addressed in this short notice. We recommend timely review and consultation with patent counsel.