The US New Patent Law: March 16, 2013

The following is a further posting in a series of articles by David French, a patent attorney with 35 years experience, which will review issues of interest touching on the field of Cold Fusion.

I have been hesitating posting on advances in ColdFusion – LENR because I am still in learning mode as to what is going on. But a new topic has come up in which I do feel I have some strength. Key amendments to the US Patent Law signed by President Obama on September 16, 2010 will come into effect on March 16, 2012. This posting is to provide guidance to those who fear that some kind of revolution or collapse is likely to occur.

These US Patent Law amendments are often represented as a change from a first-to-invent to a first-to-file system for handling conflicting filings. This is part of the truth. However this feature in itself is not going to affect most patent applicants. First-to-file has been the law in Europe for essentially 100 years. Canada adopted this style of law in 1989. Not much changed in Canada after the transition. Conflicts occur in less than 1% of filings, significantly less, in both countries.

Of greater significance will be the standard of world-wide novelty tied to the filing date. Applications filed at the US Patent Office before March 16, 2012 will only be valid if directed to things:

1. Not described a printed publication issuing anywhere in the world
2. Not in public use in the United States, and
3. Not on sale in the United States

Such event must not have occurred before the inventor’s date of invention and certainly for not more than one year before the US filing date.

Under the new law, patent filings will only be valid if directed to things not previously “made available to the public” anywhere in the world, in any manner whatsoever, before the applicant establishes a patent filing date describing how to build what they have invented. This type of patenting requirement is called “Absolute World Novelty”. In terms of newness, your idea will have to be pristine on the planet Earth in order to obtain a patent.

Under the previous system inventors were misinformed if they thought that merely thinking of an idea reserved their right to obtain a patent for a year. Only inventors who communicated to someone else a complete idea with a disclosure that would allow the idea to be put into effect qualified as having conceived an invention. And then you had to follow-up expeditiously to either build a prototype or file a patent application. These requirements were traps in the old system, now to be left behind, that many innocent inventors did not appreciate.

In place will be the new requirement that you have to make your disclosure in a patent filing. Once this understanding is established, inventors will be far more likely to base their patent applications on written documents that will support truly valid patent rights. The new system will require inventors to sit-down and figure out what it is exactly that they want to patent. For $175 they will be able to place a Provisional application on file at the US Patent Office, reserving their right to file a better and more elaborate “story” within the following year. Once the final patent application is filed by the end of that year, the “story” will be frozen. Therefore inventors should understand that they had better get it right, and they only have a year to do so.

Here is a good practice procedure for inventors to follow. Plan on using a patent attorney. Even if you prepare and file an initial application yourself, please consult with one to make sure that you are not wasting your time and to ensure that you have someone to fall-back upon when you need to do the final document.

Search, search, search to determine the feature of your idea that is new. You always patent a feature that must be new even though it is described as being part of a machine or process or article. The critical feature is the difference that makes your idea new. You need to know what has been done before so you do not waste time and money trying to patent something that cannot be patented. Even if you manage to get by the patent Examiner, your patent will be invalid if it fails to address something that is new.

Furthermore, that difference which makes it new should make a difference in terms of the relevance of your invention. This is not a topic your patent agent will raise with you on his/her own initiative. It is up to you to decide whether your idea has market value. It is up to you to find out whether your potential patent rights will be worth the $10,000 – $20,000 you will be spending on them. Your patent will have no value if your invention does not succeed.

Once you have the search results, if you think you have a feature that is new, write the whole story of how to build something that works that includes that feature. There is no harm writing it in the form of a patent disclosure, although that is not essential to make a US Provisional filing. But the template recommended by the US Patent Office for a patent disclosure will get you focused on only writing things that are relevant to getting a patent. Do not promote your ideas as being better; do not make promises that are not needed.

You only have to describe how to build something that works so others can do so later when the patent expires. If you are filing for a Cold Fusion invention, the Examiner will ask you to prove that your invention works and that your disclosure is sufficient. And you must ensure that there is a feature present in what you have described that makes the overall process or article or machine new. File that write-up as a Provisional application at the US Patent Office; cost: $175.

Now do something that may hurt. Send that written description to a professional Searcher and have them do a search. This could cost reasonably $800- $1000 dollars for an invention that is not too complicated. If you use your attorney, they will add another thousand dollars to interpret the results of the search. But either way, you should read the results of the search very carefully. The search will have succeeded if it locates a disclosure of your not-so novel idea. You want all the bad news to come out now, at the beginning. But if you do receive bad news, it is not over.

Read all the references that the Searcher produces. Every prior inventor is a mentor and coach available to provide guidance to subsequent inventors. Understand what they thought was new and useful in your field. Think about your idea and how to modify it. There is no invention that cannot be modified. And if you are lucky, you can modify your invention both to make it better and to focus it on a different novel aspect that does have a prospect of being patented.

If you carry-out this process carefully you will understand your invention better and almost certainly will have some further good ideas. Re-file another application, at the cost of another $175. Every time you think of a really good new idea re-file the application adding the idea to the prior document. There are many cases where applicants have filed 20 and 30 times during the year following the initial filing. This is what Randell Mills does. Then at the end of the year pull everything together into one document that you take to your patent attorney, with two months to go, and work with your patent attorney to do the final filing papers.

Once the final application is on file, there is nothing more the inventor can do to improve that filing. Further filings will be possible, but they will have to address different ideas. You have to get it right in that first year; it will be your last chance for the basic idea.

That is enough guidance on understanding how to respond to the new US Patent Law. Many many inventors waste a lot of money on patents, and on inventions that are never going to pay-off. But if you learn to understand the basics, hardly more than what is set out in this post, you will be well on the road to both making inventions that count and obtaining patent rights that can potentially be very profitable.