And why should you care?

March  2013 is the date that "The America Invents Act"  goes into effect.   For inventors, patent brokers, patent attorneys and everyone else in the Intellectual Property Community, the world will change substantially.  In some case, for the better in some cases for the worse, but for sure it will change dramatically. 

End to the Research Exemption 

In a recent newsletter I wrote about taking advantage of the "Research Exemption"  to avoid the patentablity bar due to publishing or "offering for sale".  That exemption ends with the new law. So ifyou want to use that exemption be sure to file your patent application before next March.

First to File replaces  First to Invent 

The most frequently cited change is  to change the United States from the current system  called "First to Patent"  and the system the rest of the world uses called "First to File"-Here's an abridged  summary of an article that Patent Attorney  Tracy Jong wrote on this change.  The full article is available from Tracy and will eventually be published on our Blog-

."Under current U.S. patent law, the determination whether a reference is prior art is based on whether the reference pre-dates the date of the patent applicant's "invention." Under the new patent laws introduced, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the "effective filing date" (not the invention date) of the claimed invention. A claimed invention is not novel if it is described in a patent or published patent application that names another inventor and was filed before the effective filing date of the claimed invention.

There is an important exception: disclosures "by the inventor or joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor" are not prior art. This creates a "first to publish" priority for inventors.

However, it is important to keep in mind that publishing destroys patent rights in most foreign countries. Thus, under the new law, for one year, your own public disclosures will not be cited as a reference against you. These safe harbors were to protect academic researchers from being left behind in the race to the patent office. However, this safe harbor does not help outside U.S. borders, since most foreign patent offices do not give inventors the 1-year grace period. 

Good advice: stay mum about promising discoveries, to make sure they aren't "scooped" by competitors or even collaborators. If it is impossible to keep the technology contained safely (especially in the internet age, blogs, online movie clips, and other social media for students who may be working in your research labs), file quickly and file often. Companies should restructure their time-to-file process, if necessary, so that invention disclosures are generated promptly and delays in subsequent filing are minimized.

Since priority is determined by the first-inventor-to-file a patent, not the first-to-invent the inventive concept or technology, acting quickly to file a patent application can be vital to the granting of a patent. This is especially true in competitive areas where many are developing innovations simultaneously. Inventors must reduce the invention to practice as soon as possible to ensure timely filing. It is also advisable to file patent applications early to establish a prior art and effective filing date." - Tracy Jong

Besides the "First to Invent"  feature of the new law there are at least 9 other major features.  Some benefit the small inventor,  such as the reduction in patent fees. For a complete description of the other features of the bill see this section of a larger article in Wikipedia

If you need more  help dealing with the new law or anyother  patent issue check us out at www.alacartepatents.com , write us at rblazey@businessmetamorphosis.com or  give us a call at  (585) 520-3539  

In a recent article in the Rochester Democrat and Chronicle  Scott Anthony discusses the rise and fall of the Eastman Kodak company.   Since I worked for Kodak for many years and witnessed firsthand many of the  situations that Anthony discusses in his article,  I agree with much of what he says.

He describes the innovators paradox this way "When Companies have the Freedom to Change they don't see the Urgency to change" .   For years Kodak had a cash cow in photographic film and thus,  in Anthony's words,  they were able to treat  forays into new areas of business as "Science Experiments that are Academically Interesting but not Vital".   I remember one Kodak CEO who described the research labs which was then working hard on developing digital imaging as a welfare program.

At Kodak every product was measured against the benchmark of film with its very high margins and 100 years of technology development.  Needless to say most potential new  products didn't measure up to that standard.

The D&C article  is particularly pertinent to OA's business because our Opportunity Portfolio  process was designed specifically to deal with the "Innovators Paradox".   With its film business clearly a Quadrant One , Business Comfort Zone,  Kodak limited its  investigations into Quadrants II, III and IV to research programs.

They invented a lot of interesting and vital new technologies but then abandoned them for other companies to commercialize.   There is not enough space here to list the hundreds of examples that I and others witnessed over the years.

Most OA clients are not Fortune 500 companies but they still can fall prey to the "Innovators Dilemma".  Just at the time that  the company is succeeding and everyone is comfortable with things as they are is the time of greatest risk.  I have noted that when a company thinks it is big enough and comfortable enough to construct a new headquarters is the peak of its growth and the beginning of decline.  This rule always seems to work out.  I'm guessing stock analysts might make use of it.  

  To learn more about the OA process and how we can help  you  get our of your "Business Comfort Zone" before its too late,  log on to our website at www.opportunity-associates.com.