Carly Harrington: Patent law changes coming soon

Ever had an idea for a new invention but never followed through with a patent?

Inspiring inventors take note: the third and final wave of changes to the Leahy-Smith America Invents Act goes into effect next month.

"People say it's a race to the patent office and that's true," said Stephen Adams, an intellectual property attorney at Luedeka Neely Group.

The federal law represents the most comprehensive change in the U.S. patent system in more than 50 years, a huge shift for inventors and those seeking patents, he said

As a result, inventors are going to want to file sooner.

While the rest of the world awards patents based on who files first, the United States has awarded them based on who invented it first. Under the changes going into effect March 16, the U.S. will amend its procedure to mirror the first-to-file system.

"It doesn't sound like a big difference but it is," he said. "It brings the United States in line with the rest of the world. They say it's going to simplify and streamline the process. We'll see if that's the case."

There are other changes, too.

If there is a dispute among applicants, an interference proceeding is held with a panel of judges to determine which applicant is entitled to the patent. That process will be replaced with a derivation proceeding to help ensure that the first person to file a patent application is actually a true inventor.

"If you derived your idea from another invention, you're not really considered an inventor," he said. "With this process, you get a protection of sorts to determine if you should be entitled to it but someone beat you to the office."

For instance, a former employee who had access to lab research material may file a patent application before the employer. Under the new law, the ex-employee would be awarded the patent but the employer who actually invented it would want to start a proceeding.

The law also broadens the definition of prior art, or information used to determine originality claims.

Adams expects to see an increase in provisional draft applications, which are essentially placeholders until an actual application is filed. They are less formal and less expensive. While it doesn't provide protection, it does provide a filing date.

Adams has been advising clients to go ahead and file before the deadline to avoid any problems.

"We've been saying file early and file often. We're definitely seeing some increase in applications," he said. "It's piqued a lot of folks' interest. A lot of people aren't sure what to do, but consensus among all is if you've got something that's ready don't wait."