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Biz Rules

By Beau Denton May 1, 2013

Inventors Beware: U.S. Patent Rules Take Effect

The National America Invents Act (AIA) was signed into law in September 2011, and its main provisions went into effect this past March. In an effort to move toward worldwide patents, the act changes the American system to more closely match the European system, fundamentally altering U.S. patent enforcement. Tom Anderson, an attorney with Gifford, Krass, Sprinkle, Anderson & Citkowski, with offices in Sarasota, says the biggest change is a transition from a “first-to-invent” system to “first to file,” meaning, “If you’re thinking about patent protection, you need to do it as soon as possible. There are great risks in delaying to file an application.”

The AIA also eliminates the grace period that previously allowed inventors to entertain offers for sale before the patent was officially filed. That means that if you try to enforce a patent against an infringer, and they discover that you made an offer to sell before the patent was filed, “That patent will be thrown out and lost,” says Anderson. (It’s important to note that the other grace period, allowing for public disclosure of an invention before the patent is filed, is still allowed—one remaining difference between the U.S. and European systems.)

The upside of the AIA is that it removes unnecessary formalities and makes changing and challenging patents easier. “You can make corrections much more easily,” says Anderson, “so they don’t have to be as perfect as they used to be.” Also, a new post-grant review process means that, for nine months after a patent is issued, you can challenge it in the patent office instead of going to court. The nine-month time limit, though, means it’s important to track new patents that apply to your work. To learn more, visit uspto.gov.

Overheard

“You will always win if you make something better at a lower price.”

Marketing expert Phil Kotler at New College of Florida’s Winning At Innovation event.

59

The percentage increase in the number of women-owned firms in the U.S. between 1997-2013.  (U.S. businesses increased by 41 percent during that period.)

SOURCE: The 2013 State of Women-Owned Businesses Report, commissioned by American Express OPEN with the assistance of the U.S. Census Bureau, published March 2013.

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