American Davids of Innovation, Start Your Engines: Strategies for Coping with First to File Under the America Invents Act

David vs. Goliath

Now that the dust is settling from the passage of H.R. 1249/S.23 (aka the oxymoronic America Invents Act) and those (like me) have stopped “moaning and groaning” about how the America Invents Act or AIA (I feel like washing my mouth out with Ivory soap every I say it) is an utter “sham” to be called reform, it’s time to deal with the reality.  The AIA will definitely affect how innovative American small businesses and individuals (the “Davids”) approach patenting their technology in the U.S., especially the change from “first to invent” to “first to file” which has now slanted the playing field in favor of large multinational corporations such as Microsoft (the “Goliaths”).  But there are still patenting strategies for the American Davids of Innovation to cope with the AIA (and still compete with the Goliaths) if the primary market to protect is the domestic market.

First, let’s define what I mean by the domestic market.  By domestic market, we’re talking about the United States. Not Asia.  Not Europe.  Not even NAFTA.  Just good ol’ America which, for many American Davids is all they care about, and can usually deal with.

Next let’s discuss what happens when you go from a “first to invent” regime as the U.S. currently has to the new “first to file” regime under AIA.  I’ve already discussed some the changes in the dynamics in an earlier article on the impact of the AIA on compliance with Bayh-Dole obligations.  See Bayh-Dole Compliance Obligations Meet America Invents Act.  But what I said in that earlier article bears repeating.  Under the current “first to file” regime, the critical “prior art date” (i.e., prior art caused by third parties, not the patent applicant) for U.S. patent filing purposes under a “first to invent” regime is the invention date.  Admittedly, the U.S. patent filing date is treated as the “constructive” invention date for prior art purposes.   Even so, the U.S. patent applicant can still potentially swear behind the prior art date by showing an earlier invention date.  In effect, the U.S. patent applicant who cares only about patent protection in the U.S. (i.e., the domestic market) has up to a one year “window” after the invention date before having to really worry about intervening prior art created by others after that invention date.

The AIA has completely changed that dynamic.  Under the “first to file” AIA regime, the effective prior art date is what prior art exists before the U.S. patent filing date.  In other words, the U.S. patent applicant no longer has the luxury of that potential up to one year “window” after the invention date.  Instead, the danger of intervening prior art by others steadily (and potentially exponentially) increases as time passes between the invention date and the U.S. patent filing date.  Put differently, U.S. patent applicants are now really in a “race to the U.S. Patent & Trademark Office (USPTO)” to minimize the ever increasing danger of intervening (and accumulating) prior art coming into play.  For the Goliaths, they’ve been existing in this situation for many years because the rest of the world (ROW) is “first to file.”  But for the American Davids, “first to file” under the AIA is going to be culture shock of the worst, and most expensive kind, with time pressure that these Davids aren’t prepared or trained to handle.

But rather than “moan and groan” some more about how unfair the AIA is, what can American Davids do to cope with the “first to file” regime under the AIA to make it palatable?  I’ve got some initial suggestions of strategies that the American Davids might be able to use to cope with the time pressure (and potential cost) that the “first to file” regime under the AIA has created.  I also won’t say that any of these strategies is necessarily “bullet proof.”  So here we go:

 1. For the first 18 months after the AIA is enacted, consider doing U.S. patent filings to take advantage of the soon to be extinct “first to invent” regime. 

One of the “transitional provisions” in the AIA is that the “first to file” regime won’t go into effect for 18 months after the date of enactment of the AIA.  In other words, there is a new 18 month “window” in existence to take advantage of the “first to invent” regime when it comes to what date (i.e., the invention date) prior art of others is judged by.  The American Davids will have to, of course, make sure their pocketbooks can handle what may be a “filing frenzy” to get the benefits of the “first to file” regime. (There is also likely to be a “filing splurge” with the USPTO to take advantage of this 18 month “window” which will put further strain and pain on the existing pending application “backlog.”)

2. Once we’re officially into the “first to file” regime under the AIA, U.S. patent filings must begin soon after the invention is created. 

Most significantly, getting that initial patent filing into the USPTO as quickly as is reasonable will assume greater importance as intervening (and accumulating) prior art starts growing like a sword of Damocles over the patent applicant American David. Waiting to make that first filing for up to a month after the invention is created/recognized to properly assess what prior art exists and to prepare a patent application that meets the “written description,” and “enablement” requirements of 35 U.S.C. § 112, first paragraph, may be all the American David can realistically count on.  But waiting several months, and especially a half a year, to “hem and haw” over whether the invention is worth the economic benefit to do a U.S. patent filing is almost certain to result in a fatal (or nearly fatal) intervening prior art event.

3. Consider doing a provisional for that initial U.S. patent filing.

Getting that first “date stake” in the ground early is critical in a “first to file” regime and provisionals can be cost effective for American Davids to cope with the “first to file” regime under the AIA.  Using provisionals in a U.S. patent filing strategy is also not a new idea.  See Using U.S. Provisional Applications In Your Patent Strategy.  One benefit is the lower government fee filing cost which is currently $110 for U.S. provisionals filed by American Davids (i.e., the American David can file at least 4 or 5 provisionals compared to the filing fee for one non-provisional).  You also don’t need an oath signed by the inventor(s) to file the provisional.  But more significantly, the filing of the provisional does not start the patent term clock ticking like a non-provisional (i.e., 20 years from the earliest non-provisional filing date).  Again, like the linked article cautions, a provisional must meet the “written description,” and “enablement” requirements of 35 U.S.C. § 112, first paragraph (like a non-provisional).  Meeting these “written description,” and “enablement” requirements (which also determine the scope of claims which might be allowed) is one “good” reason why taking up to a month to get that first provisional filing into the USPTO might be advisable.

4.  Use subsequent provisionals to build up scope and strength of the invention after the initial provisional/non-provisional filing.

As the linked article notes, provisionals are especially valuable for doing multiple filings to cover sequential improvements of a basic technology and to establish early filing dates for these improvements at relatively low cost.  American Davids can do the same to build upon the initial filing, including filling in any “holes” that were left by the need to make that initial filing in an expeditious manner, and to possibly change or correct the scope of the invention defined in that initial filing.  With these multiple provisional “date stakes” in the ground, the American David may get a little more breathing room to determine whether the intervening prior art makes it worthwhile to go “full bore” on patenting and to also decide when to “pull the trigger” on the final non-provisional filing that claims the priority benefit of these provisionals (still available under even the AIA) and thus start the patent term (and examination) clock ticking.

As stated earlier, none of these proposed strategies will necessarily address all of the time pressures and costs now imposed on the American Davids by the “first to file” regime of the AIA.  But without some sort of patenting strategy to address at least the domestic market and to take into account the challenges imposed by “first to file” regime of the AIA, the American David will likely get crushed by the Goliaths.  As some have stated in different contexts, the “time is now” for addressing what to do under the “first to file” regime of the AIA.  And for the American Davids of Innovation, it’s definitely time to “start your engines.”

*© 2011 Eric W. Guttag.