Get a prompt early filing date for new developments with a provisional patent application.\u00a0 Update and re-file the provisional application as improvements are made.\u00a0 Get the earliest possible filing date for each development.\u00a0 Until there is clarity, do not trust the one year grace period where you do not have to.<\/p>\n
Simultaneous publication with your patent filings creates an early prior art date in case you elect not to pursue your provisional patent application.\u00a0 (A provisional application that is never converted or refilled as a utility patent application is not prior art).<\/p>\n
In most cases the old patent law is more advantageous to applications, so applicants will want to file all new applications and new continuation in part (C-I-P) applications before<\/em> March 16, 2013.\u00a0 After March 16, 2013, applicants may want to segregate continuation applications from CIP applications that might be covered by the new law.<\/p>\n To the extent that an applicant perceives a benefit to being treated under the new law, that applicant may want to hedge its bets by filing an application before<\/em> March 16, 2013, and a second C-I-P application with a slightly supplemented disclosure after<\/em> March 16, 2013.\u00a0 The applicant can then have the new law apply simply by adding a claim to the supplemented disclosure at any time (but cancelling the claim won\u2019t revert the application to the old law).<\/p>\n Now more than ever it is a good idea to watch the applications of your competitors because the new patent law improves your ability to do something about it, by submitting prior art to the USPTO, Post-Grant Review (PGR) and Inter Partes<\/em> Review (IPR).<\/p>\n The new law provides two ways to challenge another\u2019s patent, but the impact of estoppel provisions on the ability to defend subsequent litigation if the effort is not entirely successful must be carefully considered.<\/p>\n Many inventors will be disappointed to learn that the first-to-file does not mean they can throw away their notebooks.\u00a0 An inventor\u2019s notebook can still be valuable proof that an invention was not derived from another.<\/p>\n Document your disclosures to third parties, noting what was disclosed, when it was disclosed, and to whom it was disclosed.\u00a0 This could be valuable proof that a third party derived the invention from you.<\/p>\n While publication of your application locks in its prior art effect as of its filing date, and creates provisional patent rights, it also starts the one-year clock for initiating derivation proceedings against competing applications or patents.<\/p>\n It has always been a good idea to pressure test your patent before heading to court, but the new patent law provides for Supplemental Examination to correct or remove many of the potential defects you might discover.<\/p>\n","protected":false},"excerpt":{"rendered":" 1. File Early and File Often. Get a prompt early filing date for new developments with a provisional patent application.\u00a0 Update and re-file the provisional application as improvements are made.\u00a0 Get the earliest possible filing date for each development.\u00a0 Until … Continue reading 4.\u00a0 File Parallel Applications Under Both the Old And New Laws?<\/h2>\n
5.\u00a0 Watch What Your Competitors Are Up To.<\/h2>\n
6.\u00a0 Carefully Consider the Consequences of PGR and IPR<\/h2>\n
7.\u00a0 Don\u2019t Throw Away Your Inventors\u2019 Notebooks.<\/h2>\n
8.\u00a0 Document Your Disclosures to Third Parties.<\/h2>\n
9.\u00a0 Consider the Effect of Publication of Your Application<\/h2>\n
10.\u00a0 Thoroughly Vet Your Patents before Enforcement<\/h2>\n