Invention in an Envelope

Invention in an Envelope

April 3, 2017
Walker Weitzel
Patent Law

Protecting intellectual property rights used to be a lot simpler

Up until March 16, 2013, the US was the lone holdout for the first-to-invent system. Prior to that, it was tribal knowledge that if you invented something, you could write down a description of the invention, put it in an envelope, mail it back to yourself, and hang on to that sealed envelope as proof that you were the true inventor. OK- it takes a lot more than that to actually own intellectual property rights, but it was a good start and it actually had legal effect.

The method actually worked, and it occasionally was used as evidence during an interference proceeding or for invalidation during a lawsuit. US patent law used to be that the first to invent was entitled to intellectual property rights or patent as long as they were continuously and reasonably diligent in reduction to practice. Significant case law exists that tells us exactly what continuously and reasonably mean, but the upshot is that it was possible to invent something and get a patent on it, even if someone else was able to beat you to the patent filing.

There has always been a one-year grace period after the first public disclosure of the invention in which an inventor is required to file for patent. If the inventor fails to file within a year of the first public use, publication, sale, or offer for sale, with few exceptions, the inventor will forever lose their intellectual property rights.

On March 16, 2013, the final provisions of the America Invents Act became law, and the US officially switched over to a first-to-file system. While we still have the one-year grace period, the first inventor can no longer rest easy knowing that as long as she files within one year, she should be entitled to a patent. We’re in the brave new world of the first-to-file system, and if someone else beats you to the patent office, then it’s game over.

Practically, this has some significant implications for the development process. Inventors used to be able to defer filing for a period of up to a year after first taking their invention public. That year was valuable time in which the inventor could test the commercial value and success of the invention and freely talk with business and manufacturing associates to work on the commercial aspects of the technology. All the while, the inventor knew that she could file later, and as long as she was the original and true inventor, she should be able to get a patent. But no longer!

Today, when an inventor first goes public with her invention, the one-year grace period clock does start ticking, but she also faces the additional pressure of knowing that if anyone else comes along and files within that year then they could cost her the rights to the patent. It is possible that neither the true inventor nor the first filer will end up with a patent. It is a peril of the first-to-file system.

Peril notwithstanding, however, the system does have its benefits, and there is a reason that it has been universally adopted (every country with a patent system uses a first-to-file system now). The primary benefit is clarity in patent proceedings. The first-to-invent system, while very fair, was inordinately costly in that it often led to litigation and other proceedings that were burdensome on inventors, the court system, and the Patent Office alike. The question of who was the first to file is fairly clear-cut.

So, what does this mean for inventors? It means that it is important to get to the patent office first for protecting intellectual property rights. It means that they want to avoid disclosing their idea to anyone not bound by confidentiality agreement or privilege until they file. It means they want to file early.

Therefore, it has become more important than ever that inventors engage with patent counsel early in the development process. I offer free consults because, as the adage goes- an ounce of prevention is worth a pound of cure. I want you to have the best information about how you can in protecting intellectual property rights in a patent, and I want to be able to file promptly for you once you are ready.

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