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The
America Invents Act was initiated in 2011 and institutes some new changes to patent law. The newest inclusion to the law is that now patents are given based on a first-to-file system, whereas previously they were given through a first-to-invent system.
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I’m at a seminar on the America invents act (aia) for patent law. I wanna know how patent law could work with open science
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On march 16 2013 America becomes a first to file system instead of first to invent
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After march 16 publicly disclosed inventions may not be protected by the 1 year grace period currently offered.
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I found out later that this was not true. The speakers confusingly used the terms disclosure and public disclosure, not interchangeably but it seemed that way. See below.
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Ok clarification: public disclosure is very important when filing a patent. We’ll get to that hopefully.
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I mention later that public disclosure is called prior art. Under the former system there was a year of protection from the moment of public disclosure prior to filing a patent, as long as you could prove that you are the original inventor. Under the new system there is no longer the first-to-invent policy, so public disclosure could become even more important.
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If an inventor discloses but doesn’t file patent within a year, neither inventor nor other simultaneous inventors can file within that year.
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There was the scenario presented with two inventors. Inventor A publicly discloses invention. Inventor B files for patent some time later. Inventor A then files for patent longer than the 1 year grace period for prior art. According to the presenters, neither inventor gets the patent. I didn’t understand why.
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Consider pre-filing disclosure. this is not the same as public disclosure.
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The pre-filing is what I call provisional application in the next tweet.
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If you have a patentable idea, consider filing a provisional application. Cheap, secret, minimal requirements.
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According to speakers, the provisional application is low cost ($125 for small entity inventors, such as individuals, $250 for large entities like corporations). The intellectual property is also kept secret during the provisional period until patent. The provisional application provides the inventor with the 1-year grace period that also comes with public disclosure, but you have the ability to maintain the secrecy of your project.
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Provisional application allows filers to put patent pending on an invention.
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There is a lot of talk about prior art. I’m not entirely sure what this concept is.
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I clear this up in some tweets below.
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Date of ultimate invention conception date WAS the priority before. Now it’s a race to the patent office.
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Statement was made about this giving leverage to corporations with lots of money over individuals with lower financial capabilities. This is why provisional application is a decent work around. Also why open notebook science is an even better work around (free).
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There is no longer a distinction between US and foreign prior art. I think prior art and public disclosure are the same thing, but not sure.
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If foreign policy counts for us patents, us patent office may have tough time keeping up with foreign disclosure. (1/2)
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Onus is on inventor to challenge patents (2/2)
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Foreign patents and foreign public disclosure count in the US as prior art, and fall into the 1-year grace period. Because this places a new burden on the US patent office, patents may be granted in excess (which is already in excess) and patents may not be invalid until there is a conflict dispute. I’m pretty sure that’s how a lot of patent proceedings already occur. This eventually puts the onus on the inventor to find infringements and file suit to argue the point.
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Foreign patent applications act as prior art for us patent filings.
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The next three tweets are a copy and paste from Wikipedia about prior art terminology.
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Prior art, in most systems of patent law, constitutes all information that has been made available to the public in any form… (1/2)
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…before a given date that might be relevant to a patent’s claims of originality.(2/2)
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If an invention has been described in the prior art, a patent on that invention is not valid.
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Prior art and public disclosure are the same thing. And I think the third tweet refers to patents from other entities, not the original inventor.
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Prior art does not exist for inventions by collaborators. This is to say, prior art amongst the collaborators.
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This is actually confusing. If you are doing research with a collaborator at another institution/company file a joint research agreement. Neither entity can file a patent first without the other entity. The joint research agreement may/may not act as prior art, I wasn’t sure about that one. But the important point is that joint research agreement helps the process.
The speakers gave an example, but the details are fuzzy. They said they would post the slides, so when that happens, I’ll share them and refer to the timeline.
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Tips: file provisional app. If you have collaborators, get joint research agreement, have good record keeping
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Still not sure how
#opennotebookscience can be helpful/destructive for patent filings. I’ve never heard so many contradictory rules!
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Based on the presentation and the discussion afterward, open notebook science can actually be beneficial for patent filings. JC Bradley highlights this below, and even with the law change it seems to be even more useful since first-to-file is the crucial step now.
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Speakers advocate filing provisionals for everything. Wouldn’t that create a lot of unnecessary paperwork, most of which won’t be patented?
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That was all I had for the presentation. I spoke with the speakers after the presentation, and asked them about the relevance of ONS to this topic. As I mentioned above, the change from first-to-invent to first-to-file makes it a race to patent. The argument is that entities with a lot of money would benefit since they could just patent every idea. The law is made more accessible because first-to-file can be attributed via a provisional application or public disclosure. From that point on, the applicant has 1 year to file a patent.
To me, open notebook science can be a major benefit to the new patent process. Since it does cost money to file a provisional application, ONS (or other web disclosure) would provide a free alternative to the provisional application. The only difference between the two routes is that through ONS, the patent is immediately public information, while the provisional application keeps the idea in secret. Because the patent will eventually be public domain, the incentive to innovate is delayed a bit.
It should be noted that even though ONS makes your idea open, and encourages potential modification it does not encourage stealing of the idea. You are still protected from patent infringement. But if a competitor sees your idea and makes non-trivial (non-obvious) changes to your idea, then they can be granted a new patent. That is no different from how the patent process works anyways.
But to me, filing a provision for every idea you ever come up with and paying $125 every time is a waste of money since you aren’t likely to follow through with every idea. It also gives the US patent office a lot of unnecessary paper work, and could actually stifle innovation and creativity. ONS would in turn allow some one to share their ideas and protect the best ones for the original creator (since you have one year from first disclosure). You could use your resources to fight for the ones you want to keep and allow others to cultivate the ideas that you won’t ever get to work towards.
It was interesting that when I asked the speaker about ONS and patents, while he didn’t say the conflicted (cause they don’t), he did say that it didn’t make sense to pursue both paths. His reasoning was basically what I outlined above, but it also felt like there was a money undertone to it. You can’t make money if you share your ideas. To that I disagree, but that’s an entirely different story altogether. One that I hope to address in April.
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Still not sure how #opennotebookscience can be helpful/destructive for patent filings. I’ve never heard so many contradictory rules!
@Thescienceofant here is one way ONS interacts with patent law usefulchem.blogspot.com/201…