Last week, the US Senate passed the Leahy-Smith America Invents Act. Under this new law, America will abandon its unique first-to-invent patent system and move to a first-to-file system. This new legislation has legal scholars and patent law experts discussing the impact it will have on American business and innovation. It has also left American businesses wondering what they should be doing now to meet the challenges associated with first-to-file, whatever those challenges may be.
How should America’s inventors respond? Over the last month or so, I have noticed the following advice circulating in the media and blogosphere: File early. File often. ‘Early’ I get. Filing early reduces the risk of coming in second in a race to the patent office. But where does ‘often’ fit in? While it seems reasonable, simply telling inventors to pay more money for more patents is the wrong advice.
In an informative article in the Corporate Counsel section of www.law.com, even Retired U.S. Court of Appeals Judge Paul Michel said, “Now that everyone knows that the first filer wins, there will be pressure on all companies to act as fast as possible, even if there is research left to do. [Businesses] may need to file three or four patent applications over the course of one or two years. In the past, they would have quietly kept working and then filed one application at the end.” [Emphasis added.]
Are inventors supposed to spend thousands of dollars on non-provisional applications that they may or may not need? Should they file cheaper provisional applications to get an extra year before they have to make a real decision? I hate to think that provisional patent applications are the best answer. Making this exception the rule creates an environment where money, time and effort are wasted, and it only kicks the ‘decision-making can’ down the road.
Filing often will probably be the solution du jour, but it is not sustainable. Companies cannot afford to file even 2 patents for every 1 filed under the old system, so what are the options? In my opinion, there are three: (1) reduce the number of patents being filed, (2) spend a lot more money on patent protection, or (3) find a better way to identify patentable subject matter early on. The first two options are inadequate solutions for any business. The only real solution is to find a better way.
There is a better way. A fundamental change to U.S. patent law should mean an equivalent change in the behavior of American business. It should mean paying more attention to the patent function within the organization. It should mean better planning, faster decision-making, and smarter execution. Nowhere should it mean more business and more money to patent attorneys.
There is a better way. Companies don’t need to be ruled by the fear that ‘file early; file often’ creates. If they have the right processes and systems in place that allow them to plan, make quick decisions, and easily execute on those decisions, then they can get more from less.
Right now it is more important than ever to have the right systems and processes in place. IP in focus has the right IP management solutions for navigating the new first-to-file system. Call me (508) 878-3590 to make an appointment to discuss what option is right for your organization.
There is a better way. So I say, File early. File Smart.