Run - Don’t Walk: First-Inventor-to-File is Here  

POSTED BY Bruce Story and Chris Huffines AT 1:45 P.M. Mar 8, 2013

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ipCG AIAOn March 16 the Leahy-Smith America Invents Act, including implementation of first-inventor-to-file, goes into effect.  The new law allows the first person to file a patent application to be granted the patent, if patentable and if it wasn’t “derived” or misappropriated from another. This radical change has created a classic “race to the patent office.” In light of this change, it is vitally important that companies win that race if they want to realize value from their inventions.

The key to winning that race is to speed up the process from invention conception to filing. Below are three of the most important strategies ipCG has identified to file faster and maximize the chance of owning the patent.

1. Invention extraction

The first and best way to win a race is to get a head start. In the IP field, a company can get the jump on its competitors by following up inventions with a dedicated invention extraction process (such as ipCG’s ipAIASM Secure and ipAIASM Master Disclosure processes) to proactively develop initial inventions into a suite of patentable ideas. A subsequent invention that might naturally be invented months or years later can be identified and developed within days or weeks, before the initial invention’s patent application has even been filed. In addition, the structured approach of an invention extraction process sets up the infrastructure to quickly develop extracted inventions. The subsequent inventions’ patent applications can be filed before competitors even know an opportunity exists.

2. Speed up the review process

Most IP Review Committees meet monthly or quarterly. Potentially, an invention will languish for three whole months or more before it is reviewed and an application is begun. That is three months of wasted time (and that is assuming the committee makes an immediate decision) during which a competitor might have filed a similar patent application!

To remove the bottleneck, new invention reporting should be channeled into standardized highways (such as ipCG’s ipAIASM Conception-to-File service) that allow the IP Review Committee to review more frequently or even on a rolling basis. If that is not possible, then a Committee meeting should be scheduled as soon after an invention extraction session as possible to minimize the delay. Also, a standardized process minimizes follow-ups from the inventor during review and application preparation. This streamlined review process substantially minimizes the time to file.

3. Identify core inventions and IP business issues

Some inventions are so critical to company success that they are “at all costs” targets. Other inventions are just not that important and can be pursued more leisurely or not at all. The company that knows its IP business issues and can immediately identify its core inventions has a significant advantage over the company that is figuring it out as it goes along.

Knowing what inventions will be critical (from, for example, ipCG’s ipAIASM Core/Non-Core Portfolio Analysis and ipAIASM Business Issues services) helps companies identify core inventions and IP business issues in a rational, structured system.

Most important, core inventions or inventions which are critical to an IP business issue are immediately identified. Maximum resources can be applied to developing and filing patent applications for those inventions, while non-core inventions can be pursued at an appropriate pace. Figuring out which inventions are important ensures limited resources are directed to the most valuable inventions.

Final implementation of the AIA has changed the race track substantially. Companies will have to adjust in order to win the new race to the patent office. ipCG’s cutting-edge ipAIASM services are designed to let our clients dramatically shorten the time between conceiving an invention and filing the patent application. A client company will run—not walk—to the patent office.


TAGS: America Invents Act (AIA) | Bruce Story | Chris Huffines | Regulation and Legislation | Strategy
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