If you Snooze you lose, especially when it comes to changes in Patent Laws

by Michael Braithwaite, Austin TX, March 1st, 2018

Intellectual Property changed for the United States on September 16th, 2011 when President Barack Obama signed into law the "Leahy-Smith America Invents Act" or (AIA). This law passed by Congress and authored primarily by Senator Patrick Leahy (D-VT) and Representative Lamar Smith (R-TX) represents the most significant changes to our United States Patent system in more than 60 years.

This legislation changes our patent system from a first-to-invent to a first-inventor-to-file system, changes some proceedings, and creates the opportunity for post-issuance opposition. Most of these provisions went into effect on September 16th, 2012, and all the provisions became in full effect on March 16th, 2013 including first-to-file.

This sweeping change in the law has caused most all tech firms to modify their patenting processes. Previously many firms had IP boards or committees that would meet on a regular schedule to review patent submissions to determine if they would like to proceed to the next step and actually file for the patent. Since these new changes in our patent system, these boards need to be more agile and should consider changing to an ad hoc schedule based on the submissions.

You will find many topics online discussing the fallout from these changes and both pro and con arguments that support all sides. Even if you disagree with these changes, they are the law of the land now and you will need to augment or change your internal processes to ensure you are capturing all of your intellectual property. Defendable IP is a huge value proposition for your company and all stakeholders. However, one of the most important reasons would be as a defensive measure for your inventions and for your development.

What to do?

Make sure that you have in place the ability for anyone in your company to quickly have access to a one or two-page patent submission form. This form needs to be clear, concise and easy to fill out, your goal should be to remove any barriers and streamline this initial process.

Next, the submissions need to have a fast and quick approval process by the head of engineering or patent board. A best practice would be an expedited approval process once the group has determined to file.

Once a patent submission has been approved by the board or the engineering management ~ DO NOT FILE a utility application . . . instead, consider filing a US Provisional application. IMHO this has always been an important step, but now with these changes, it is even more important. Another interesting note when working on a "submarine application" would be that provisionals are never published. Unless you covert the application to a PCT or Utility it would not be disclosed, and even when it is, that is 18 months or later and if you select to file under a non-published utility (not available for PCT), the application can be hidden for up to a decade.

Another thing to keep in mind is that a provisional application is NOT a Patent, and there is no such thing as a provisional patent. The main difference between a provisional application and a standard utility patent application are that you are not required to write the claim language for the provisional, whereas you are required to write the claims in a standard utility patent application. With that said, experienced patent authors will usually add a set of claims to the specification of a provisional but again this is not required.

What is so good about a provisional application?

First of all, it plants the proverbial flag for your invention and more importantly for the new law a quick first date and from that point forward this will be your Priority date. Another advantage of the provisional application is you are now officially allowed to claim a "patent pending" status just like that with a utility patent application. Provisional applications expire one year from the date of filing so you will be required to convert the provisional over to a normal utility patent application with the USPTO (with the newly drafted claims) or you can choose to file a Patent Cooperation Treaty or PCT with the World Intellectual Property Organization (WIPO).

Should I file a PCT?

The decision to file a PCT is a fairly straightforward one. The main question you should ask yourself would be; Are you planning to sell your product or defend your patent internationally or only domestically? If the answer is yes, you plan to sell or want to defend your invention international then filing a PCT may be another good strategy and this must be done BEFORE you are shipping or in most all cases officially showing the product. Another not so obvious benefit would be the additional six months gained on top of the twelve months gained by the provisional filing. This now affords you eighteen months time to in crafting the claim language. An additional benefit of the PCT filing is that the WIPO will conduct a search and provide you with a report. The information in this report contains prior art search results from all 152 PCT treaty countries. Armed with this knowledge you can make a better-informed decision to which foreign countries you would like to file in and while it is not considered an exhaustive prior art search it does give you a great start when crafting your international IP strategies and could even help you save some money by not wasting time and efforts in countries that may have an already crowded prior art landscape for your invention.

As for myself and at this time, believe me, I am taking full advantage of these new laws for all my new inventions. I feel that most of all the current AV firms and media companies are asleep at the wheel, AVoIP and the current crop of content delivery systems available are already obsolete, they just don't know it yet.

This is not the first time I have felt the shift of the sand underneath our AV feet, some of my first patent work on streaming media was filed in the early 2000's and at that time, matrix switches and RF modulation ruled the day. I was told by many respected and successful people in the industry that nobody would use Internet protocol for real-time signaling like AV, and how would you synchronize a non-deterministic network with no guarantee of the quality of service and yet I did just that and now here we are. I especially find it humorous when I see AV firms at ISE and Infocomm shows who talk about pioneering AVoIP since 2008. This is funny and I hate to interrupt them with this breaking news but you may want to do just a little bit of some due diligence as not only have I authored patents that describe in detail the same said "pioneering" almost a decade earlier. In addition to authoring some fundamental intellectual property that AVoIP is based on, many of my realized products have won countless industry awards at trade shows such as CEDIA, CES, EHX, and Infocomm. These products have also won multiple readerships and press product-of-the-year awards starting from 2004. They may also want to check with the thousands of AVoIP deployments including hotel's, hospitals, schools, and stadiums many of which are still running today that was commissioned well before 2008.

Well, the shift in the sand is happening and is here again folks and the combination of the Uberisation of the demand and the ability for the true content owners to eliminate all middlemen and directly monetize with end-users have already started the next wave of media and AV disruptions.  I know what you may be thinking that companies like Apple, Pandora and the upcoming Spotify billion dollar IPO that it may be hard to believe this, but trust me it is already in motion and from my vantage point, most AV firms are seemingly or woefully incompetent or blind to where the net is. They seem to still be shooting the puck to where the net was...but that is just my opinion...

-DrdB