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February 4, 2013 — A weekly look at Wyoming business questions from the Wyoming Small Business Development Center (WSBDC), part of WyomingEntrepreneur.Biz, a collection of business assistance programs at the University of Wyoming.
By Anya Petersen-Frey, WSBDC southeast regional director
I checked with Karen Kitchens, an intellectual property librarian, to give us an update on the America Invents Act first-to-file and provisional applications.
President George Washington signed the first United States patent statute in 1790. Since that time, U.S. patent law has authorized the granting of rights to the first to invent a patentable invention, contingent upon meeting rigorous terms and conditions.
This means that the date the inventor envisioned the invention is the “date of invention” -- the date of ownership. Generally, this date preceded the time of filing with the U.S. Patent and Trademark Office (USPTO). Soon, this will no longer be the case.
As of March 16, one of the most debated provisions of the America Invents Act (AIA) will take effect. The “first-to-invent” system will change to the “first-inventor-to-file” system. This provision changes the legal ownership of a patent onto the entity that is the first to file with the USPTO, bringing the U.S. system closer in line with most of the rest of the world.
The new version declares that a person is entitled to a patent unless the claimed invention was publicly disclosed before the effective filing date of the patent application. The exception to this: The disclosure was made less than one year before the filing of the patent application (by the inventor himself); and the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor.
Once this provision takes effect, filing patent applications as quickly as possible may be in the best interest of the inventor. In order to stay competitive, inventors of all sizes (including small business owners) will need to file patent applications quickly in order to stay ahead of competitors.
Filing a provisional patent application may be one way to quickly get a patent application on file at the USPTO. A provisional application allows filing without a formal patent claim, oath or declaration; or any information disclosure statement.
It provides the means to establish an early effective filing date in a later-filed, non-provisional patent application. A provisional application also allows the term “patent pending” to be applied in connection with the description of the invention. Provisional applications have a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. This means, once a provisional is filed, you have 12 months to file a non-provisional.
A provisional patent application may or may not be the path for you. Provisional patent applications do not mature into a granted patent without further submission. All provisional applications automatically become abandoned when the pendency period expires by operation of law. All potential patent applicants are encouraged to gather as much information as possible on this option. The USPTO website at http://www.uspto.gov/ has more information on provisional patent applications.
A blog version of this article and an opportunity to post comments is available at http://www.wyomingentrepreneur.typepad.com/blog/.
The WSBDC is a partnership of the U.S. Small Business Administration, the Wyoming Business Council and the University of Wyoming. To ask a question, call 1-800-348-5194, email firstname.lastname@example.org or write 1000 E. University Ave., Dept. 3922, Laramie, WY, 82071-3922.