Published by LawTechie - September 20, 2011 - LawTechie

The President signed the America Invents Act last week which provides start-up businesses with several new benefits to streamline their intellectual property (patent) securing options:

  • A fast track option for Patent Processing within 12 Months: Instead of an average wait time of almost three years, the Patent and Trademark Office will be able to offer startups growing companies an opportunity to have important patents reviewed in one-third the time – with a new fast track option that has a guaranteed 12-month turnaround.  Patent ownership is a critical factor venture capital companies consider when investing in entrepreneurs hoping to grow their business.
  • Reducing the current patent backlog: Under the Obama Administration, the patent backlog has already been reduced from over 750,000 patent applications to 680,000, despite a 4% increase in filings. The additional resources provided in the law will allow the Patent and Trademark Office to continue to combat the backlog of nearly 700,000 patent applications and will significantly reduce wait times.

Additionally, and fueling quite a bit of controversy among patent attorneys, the Act introduced a first-to-file rule which purportedly minimizes potential litigation costs over proving the priority inventor in a patent infringement lawsuit. What this means to independent or medium-sized inventors:

A discount on a government filing fee is a trifle compared to the first inventor losing the right to challenge a first to market latecomer in the USPTO where the expert examiners and appeal board members can do much to level the playing field. Now the question of who had a complete conception of the invention will be shifted to the courts where costs are substantially higher and outcomes are more unpredictable — thus, arguably, defeating Congress’ purpose in passing this law in the first place.

Now that proving an early conception date is irrelevant, small and medium-size companies need to focus resources on critical technologies to develop complete conceptions as quickly as possible. Solving ancillary problems has to take a back seat if such organizations are to be competitive with larger innovators.

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.


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