Protecting profitable ideas under America’s new patent system
by John Schuster of Caliber Law, S.C. 920.292.0000
In 2011, Congress fundamentally changed the basis of the patent filing system in America from a “First to Invent” to a “First to File” system by passing the “America Invents Act,” completely shifting the way that patents and patent protections work.
Under the old “First to Invent” system, the actual and earliest inventor of a patentable idea was protected, which meant an inventor in his basement was protected so long as he was moving to take the product to market. Under the new “First to File” system, it is the person who first files a patent that is given patent protection for the idea, regardless of who actually invented it, shifting the advantage from independent inventors and small business entrepreneurs, to large corporations who have the money necessary to rush to the patent office, and worse yet, have the outright opportunity to steal the ideas of small inventors if small inventors are not careful in the way they talk about and disclose their ideas to the public.
There is a very short grace period for inventors to disclose and then patent their ideas – right now less than 12 months from the time of disclosure and subject to a stack of rules – which essentially provides no protection for small inventors who often have to disclose the idea of their inventions to do minimum market reception tests to make sure the product is something close to what can go to market.
Reluctantly, the recommendation I have to give to my clients who have a patentable idea under the current system is that they should simply not publicly disclose the idea until they are ready to file a patent, in order to reduce the risks of someone taking, and patenting, their idea first. I think this does nothing but stunt the innovation in the marketplace and prevents some great and early ideas – which just need time to develop – from ever hitting the market. But until this changes, be sure to speak with an attorney who is experienced in these topics before you start disclosing any of your ideas, or you could be at risk of inadvertently losing your ideas to a well-funded corporation.
John W. Schuster, JD MBA is the owner and an attorney at Caliber Law, S.C., a law firm located in Oshkosh. He specializes in helping business owners start, protect, buy, sell and grow their businesses.