Are you ready for first to file? Quick survival tips for March 16

by: Innography

Categories: industry outlooks

The America Invents Act ("AIA"), which went into effect September 16, 2011, signifies the most significant changes to the U.S. patent system since the first U.S. patent was issued in 1790. On March 16, we will see the biggest change go into effect: the migration from "first to invent" to "first to file".  This will not only be a shift in processes and best practices, but even more crucial, in culture. What can executives and heavily inventive companies do to prepare? In this case, practice makes perfect.

Reduce Patent Lag

Prior to first to file, companies were not concerned with patenting every invention, as they could always prove it was their idea in a court of law with documentation. As of March 16, that will no longer be the case. First to file means just that, first company to file a patent with the USPTO wins. In order to ensure your company is first to the finish line, you will need to implement internal systems to reduce your patent lag time; most likely you will need to cut this time by 50 percent in order to stay competitive in the market place.

Like track stars training for a race, it is imperative that companies provide their inventors with training to help them file better disclosures, while educating them on why/how to file more disclosures. By automating and streamlining a process, your patent team will turn out quality patent applications with significant time savings.

Here are some common reasons for delayed patent lag:

  • Unusable format of disclosure from inventor
  • Confusing review board procedures, processes
  • IPAM and external prior art review don’t sync together
  • Attorneys unable to get inventor time, especially with confusing disclosures (e.g. on sticky notes)
  • Too many iterations with inventors on what is unique/novel about their idea, instead of enabling the inventor to refine and collaborate without attorneys

File Often. File Defensively. Protect Your Product.

In order to protect investments, companies must submit applications faster. Inventors need to be encouraged and incentivized to file more patents, while the business itself needs to establish guidelines and filters for what is actually submitted for approval.

Additionally, companies need to anticipate what its competitors are planning, and file for defensive purposes to protect their own product. The first to file system provides a great incentive for companies to file patents in anticipation of a new battleground. For example, if the next mobile phone product was going to be a killer land grab, the old first to invent standard doesn’t work any more.  Filing those patents early means either a lock on the market or protection to ensure you can use your own technology.  In order to do this effectively, designate resources specifically for this purpose and your company will consistently stay ahead of the pack.

Action Plan:

  • Identify key product areas
  • Task product managers with incentives to patent more frequently and faster
  • Put a strategy in place to ensure you are protecting yourself

Educate the Engineers

First to file represents a major cultural shift, and the inventors and engineers are at the heart of that change. In order to get the most buy in, simplify their workload, and provide them with clear, corporate workflows so they are always compliant with the least effort possible. Additionally, tie the workflow together between engineering and legal, which will help keep the entire team on the same page.

We’ve already helped several of our clients prepare for first to file, and we’re happy to help you too. By automating inventor processes and enforcing consistency, companies can ensure they are protected from being locked out of their own market.  With a 50 percent reduction in process and time, this also translates to budget savings.

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