‘Ware the Ides of March (2013)

by YourPatentGuy on January 22, 2013

We have finally arrived with the full complement of America Invents Acts changes that President Obama signed into law nearly 18 months ago. By its terms, the final provisions go into effect 16 March 2013.

You’ve heard this before, about the changes including First-to-Invent becoming First-to-File. It will be official starting 16 March 2013. Other changes include issues relating to different prior art, derivation proceedings, and assignment/ownership considerations.

Even though we’ve been referring to the changes as First-to-File, I must remind you that you still must be an inventor to file. That is what derivation refers to – a person filing was not an inventor, but derived the invention from another person. Unfortunately Congress has made it difficult to actually implement its derivation proceedings.

I’ve been asked by several inventors about how they should prepare for the final phase of implementation. The general concensus is to file as early as you can, and if possible, to file before 16 March 2013. Various fact-patterns have emerged where it suggests that, with perfect knowledge of facts that can sometimes be hard to obtain in advance, it may be advantageous to file after 16 March. What used to be called an interference (two inventors claiming essentially the same subject matter at the same time) were rare  and caused a mini USPTO trial where the USPTO determined who invented what subject matter first. The default was to award inventorship to the first of the parties to file, unless a later filing inventor had sufficient proof to show an invention before the other. Most times, the proof was lacking and the default condition wins, making the system largely a first to file system in practice. As you can see, dates of invention and inventor log books will become less important after 16 March 2013.

Contact me and we can discuss particulars of your case, or if you would like to know more about these changes.

Our friends at Klarquist Sparkman, LLP have produced a video that may help you understand the changes (I cannout vouch for the accuracy of its content.)


She plants plant patented plants by the seashore?

by YourPatentGuy on October 20, 2012

Here is an interesting matter (it is interesting for many reasons including that my lovely wife has been planting patented plants in our yard and I've begun to contemplate what it means to infringe these patents – theoretical to me, life implicating to the farmers of the world):

Supreme Court To Rule On Monsanto’s ‘Self-Replicating Patent’ Seeds | Disinformation

Monsanto demands that anyone who plants a seed containing the its patented herbicide-resisting genes pay steep “technology fees.” The problem is that Monsanto’s plants amount to self-replicating patent machines, as the Monsanto-created genes spread through the ecosystem…



October 20, 2012

The patent world continues to change, and so does YourPatentGuy. As you use the web and search for the best fit for you with respect to patent services, you can find many different options. Of course everyone is looking for the services that best match their needs, and those needs vary. I have had several […]

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3..2..1.. New Patent Fees on 26 September 2011

September 19, 2011

President Obama signed the new Patent Reform legislation last Friday just as expected. The 10 day post-enactment window for the 15% surcharge to kick-in has started. New, bigger (improved???) patent fees are in effect on the 26th of September 2011. Here is the official USPTO fee schedule.

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Patent reform and you

September 9, 2011

It has finally happened – patent “reform” has been passed by both the US House of Representatives and the US Senate, and President Obama is expected to sign this legislation. My opinion is that this is typical of “major” legislation in this day and age, no coherent, long-term view to solving real problems. The US […]

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Commercializing your first invention – solo-style

July 29, 2011

I am frequently asked a version of the following question: “If there’s a new item that’s totally different from what’s available, which option is better when considering to license this new idea: A. File a Provisional, B. Wing it with an NDA or C. Other ?” Most people seem to believe that filing a provisional is […]

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How Much is a Patent Worth? – REDUX (Design Patents)

July 4, 2011

I am prompted to write this after reading a Motion for a Preliminary injunction filed in APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD., et al. What struck me is that the motion includes no less than 3 US design patents (US D618,677, US D593,087, and US D504,889) and 1 utility patent. I remember discussing Apple’s […]

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