IP: 6 practical ways to improve your patent strategy in 2012

The new year is the perfect time for improvements as another wave of AIA provisions are set to go into effect

The New Year is a traditional time to reflect on how we can improve ourselves and our businesses. It also is a prime time to revamp your organization’s intellectual property strategy of as another wave of provisions in the Leahy-Smith America Invents Act (AIA) come into effect.

Here are six simple and practical resolutions for getting a jump-start on patent reform.

1. Enhance your docketing or file system to track what version of U.S. patent law applies to individual patent applications. AIA does not simply substitute new laws for the old—the U.S. patent system will operate under two sets of laws for many years. AIA defines effective dates, but many provisions are triggered only when a claim in a patent or patent application has a certain effective filing date.

For example, post-grant review proceedings go into effect on Sept.16, 2012, but they generally only apply to patents containing a claim with an effective filing date after March 16, 2013.

2. Enhance monitoring of competing patent applications and patents. You can maximize your options by understanding what other patent claims are pending or issuing in your field. For example, after Sept. 16, 2012, third parties can submit prior art in the prosecution of another party's patent application with an explanation of why the prior art is relevant to the claimed invention. Additionally, the new derivation proceedings will go into effect on March 13, 2013, but there are deadlines for initiating such a proceeding based on the publication or issue date of another parties' patent claims.

3. Be ready to use inter partes review to resolve patent disputes. As of Sept. 16, 2012, inter partes reexaminations before the examiners of the Central Reexamination Unit will be replaced with inter partes review before the administrative patent judges of the Patent Trial and Appeal Board.

Inter partes review should be a cost-effective alternative or supplement to patent infringement litigation. AIA provided a broad framework for inter partes review, but further details will emerge in the next few months as the USPTO publishes and finalizes its procedural rules.

4. Expedite prosecution of your most important patent applications. Already in effect is an AIA mechanism for patent applicants to speed up the patent process by paying an additional petition fee ($4,800) for prioritized examination. The United States Patent and Trademark Office (USPTO) is chipping away at the backlog of nearly 700,000 patent applications awaiting examination, but non-expedited examination, on average, takes about three years. As of Sept. 16, 2012, the AIA also will prioritize examination of applications important to the national economy or competitiveness.

5. Use supplemental examination to protect patents from allegations of inequitable conduct. After Sept. 16, 2012, patent owners can file for supplemental examination of their own patents based on information that raises a substantial new question of patentability. Unlike ex parte reexamination, the information is not limited to prior art issues. This provision may be particularly useful if information is uncovered in pre-suit review of a patent file or during patent litigation.

6. Plan ahead for conversion to the first-to-file system. The modified first-to-file system will become effective March 16, 2013. Evaluate your invention disclosure system to eliminate delays and ensure your organization has the earliest filing date for your inventions. Also, be aware of the impact of the one-year grace period, and the potential impact in the U.S. and foreign patent systems of publications and other disclosures. 

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Janelle Waack

Janelle Waack is a partner at Novak Druce + Quigg LLP and focuses on interference matters before the United States Patent and Trademark Office Board...

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