First (inventor) to file

Mark your calendars for March 15, 2013, because on March 16, 2013, the US patent office switches to the new AIA “first-to-file” system.  In fact, mark your calendars for March 14, 2013, because it is quite possible that the USPTO servers may crash on March 15 under the weight of a huge number of last minute electronic patent filings.

The US patent system has traditionally been friendly to individual inventors and smaller startups.  The old system gave inventors some time to work to improve their original concepts before filing.  Inventors were protected because the old system allowed them to prove (using lab notebooks and the like) that they had thought of the invention some time before their patent filing date.  This proof was called “swearing back”.

The rest of the world, by contrast, has been on a stricter “race to the patent office” aka “first-to-file” standard.  Under “first-to-file”, the inventor with the earliest patent office time stamp wins, end of discussion.

Congresses’ 2011 America Invents Act (AIA) changes the US from the old standard to a US version of “first-to-file”.  There are some tricky aspects to this new standard.  It is possible (with evidence, and only for a limited time) to file a USPTO “derivation proceeding” to challenge a non-inventor (i.e. alleged thief) who filed first.  Inventors are also given up to 12 months after publication or sale of their invention to file, without having their own publication or sale used against them, BUT…

If an inventor publishes or otherwise discloses their idea, someone else hears about the idea, makes a few changes and files first, under the new rules this could legally knock out the inventor’s rights to these improvements. Since, in the real world, inventions often come into focus gradually over time as a series of small improvements, you can see the problem.   To add to the fun, the courts haven’t even seen new rule cases like this yet, and it will take years for them to sort things out.

The moral is, under the new rules, if you want decent patent protection for your work, consider filing on initial concept, and filing again on significant improvements.  Resist the temptation to share your still forming ideas with the world.  The old days of protection by “swearing behind” are gone as of March 15, 2013.  What was OK to do last year is not OK to do this year.

European software patents

European software patent laws are different from the US software patent laws. In the United States, at least before “Alice” all that you had to do to overcome a “not patentable” (35 USC 101) rejection for a software patent application was to include, in the claim language, words to the effect that the invention is running on a computer processor.  The actual rules and court decisions are more complex, of course, but the fact remains that including the claim limitation “processor” used to go a long way.

What about Europe?  Although European Patent Convention Article 52 states that “programs for computers” are not patentable, this does not mean that an invention that uses software is not patentable.  Here European Patent Office (EPO) case law shows that what the EPO looks for is proof that the invention has a “technical effect” and/or has a “technical character”.  If you can show that your invention solves a technical problem, then the fact that your invention uses software does not exclude it from EPO patentability.

Of course, just as in the US, the invention will still have to satisfy a number of other stringent tests (e.g. novelty, non-obviousness) as well, but at least in Europe the “technical effect” standard gets you in the door.

Since most software based inventions have a “technical effect”, for most software applications, the “we don’t do software” hurdle will thus be relatively easy to overcome.  Perhaps just as “processor” used to be the magic word for US software patent applications, “producing the technical effect of” may be the magic words for European software patent applications.

International design patents

Good news for US inventors who are interested in filing international design patents.

Design patents are for unique designs for something that otherwise functions according to prior art.  In the US, inventions that function differently from prior art are covered by “utility patents”, while the unique ornamental appearance of a design is covered by a “design patent”.  Design patents are relatively easy to get, and presently last 14 years.

Although the Patent Cooperation Treaty (PCT) has provided utility patent inventors and owners with a simple (if expensive) way to begin to file their utility patents in various countries, the PCT system does not provide a mechanism by which an American design patent can be filed internationally.  This was a nuisance, because design patent standards can differ substantially from country to country, which made the process of obtaining international design patents (industrial design applications) complex and expensive.

Fortunately this is about to change.  On December 19, the Hague Agreement Concerning the International Registration of Industrial Designs was signed into law in the US.  The Hague Agreement can be viewed as a “PCT-like application” for design patents.

In addition to providing a standardized procedure for international filings, the Hague Agreement also extends the life of design patents to 15 years.

This agreement has actually been in the works for some time.  The original Hague Agreement was established in Geneva in 1999, and was ratified by the Senate in 2007!