When Maung Win was a research and development manager for Kimberly-Clark Corporation in the 1980s, his work for the company obtained several patents. It was an arduous process, sometimes taking several years. With the implementation of the Leahy-Smith America Invents Act of 2011, the process will change, but the effects on business have yet to be worked out.
“The America Invents Act is probably the most comprehensive reform to U.S. patent laws since the ’50s,” says Brian Gilpin, a registered patent attorney and chairman of Godfrey & Kahn’s Intellectual Property Practice Group. Gilpin works in Milwaukee but has clients in Green Bay, Appleton and Plymouth.
Patents protect intellectual property by excluding others from using the invention for a defined amount of time in exchange for public disclosure. Intellectual property can mean a physical invention, or it can include a process or design.
The America Invents Act has been implemented in phases. The first phase, at signing, brought increased fees and litigation reforms. The second phase went into effect on Sept. 16 and involved “primarily some tweaks to the proceedings that you can undertake in the patent office to have an issued patent reexamined, or a third party to submit prior art to the examiner in the course of the examination,” says Gilpin. “Prior art” is a term used to describe documentation that would challenge a patent application.
The biggest change is yet to come in March 2013, when the patent office moves from a first-to-invent to a first-to-file system. Currently, the United States is one of just a few countries in the world that issues patents under first-to-invent.
In this system, which is how Win filed patent applications, documenting the timing of an idea was paramount. “Any idea you have, put it down on a (bound) notebook page, and at the bottom, you sign it and date it, and you have to have two witnesses,” he says. “Then, you contact an attorney.”
That documentation was important if there was ever a challenge to the patent. “What happens procedurally now is that the patent office declares what’s called an interference. It’s an administrative proceeding at the patent office, it’s like a mini-litigation where both inventors can battle it out to try and prove who was the first true inventor. Under our current system, regardless of who filed first, it’s the first true inventor who is entitled to ultimately obtain the patent,” he says.
Moving to the first-inventor-to-file system is a big change for the U.S., but it’s the system that’s been followed in most countries, says Gilpin. That puts pressure on the inventor in a competitive industry. Win says a solid patent application means testing the invention and searching for prior artwork, other public declarations of the same idea, and that takes time and money.
Tom Wilhelm, an Appleton intellectual property attorney, says most of his clients are small businesses and individual investors. He has concerns that speeding up a patent application will cost them more.
“For many clients it’s going to be a two-step system,” he says. He gives the example of a client who needed an early filing date. “We filed a first application for a client that desperately needed a filing date. We came back two days later and filed a revised version, and then I came back a month later and filed number three, and a month later and now it’s number four. Each one was an attempt to establish an early filing date, while at the same time improving on what we had before, and that gets really expensive.”
Gilpin says he can see where that might impact small businesses differently.
“The reason it might be more burdensome is because of the premium now placed on being the first to file,” he says. “Obviously it’s an expense, whether you file a regular application or a less costly provisional to make that filing. It’s also an awareness thing. You have to be aware of the rule. If you don’t have experience with the patent system in the past, you’re less likely to be aware of the rule.”
From that perspective, he says, the changes might be more beneficial to large businesses and sophisticated patent applicants while becoming less beneficial to smaller businesses or individual filers.
However, Gilpin says under either system, the first-to-file has advantages. “Even under our first-to-invent system, the mere fact that you filed an application gives you a pretty solid date of invention. You might be able to prove through records or otherwise that you did it before, but once you file an application with the office, you’ve got a date certain,” he says.
Wilhelm says he would recommend filing under the current system.
“If I had a choice, I’d do it before March, and I’d work my tail off to do it if necessary,” he says. “It can make a big difference.”
Win says applying for patents with the backing of a corporation was much easier than for an independent inventor. He retired early from Kimberly-Clark, and now works as a financial planner for the Financial Information and Service Center (FISC) at Goodwill Industries of North Central Wisconsin, and is a member of Fox Cities SCORE. In his office, he has bronzed versions of his patents from his time at Kimberly-Clark.
“If you are an independent person, you have to protect your invention,” he says. “Make sure you are represented by an attorney.”
But besides legal advice, Thomas Edison’s famous advice on inventing rings true: “Genius is 1 percent inspiration, 99 percent perspiration.” Perhaps he was talking about the process of applying for a patent.
“You have to have perseverance and determination,” Win says.