AIPR's Alec Schibanoff discussed the problems the America Invents Act will cause for inventors and businesspeople - and suggested ways to make the most of a difficult situation ("How to Navigate the New Patent Law", Entrepreneur.com, September 16, 2011).
"During [the grace] period, an inventor might decide to forgo getting a patent if he realized there was no market for the new invention or manufacturing was too cumbersome or expensive," says Alec Schibanoff, the executive director of American Innovators for Patent Reform, an inventor advocacy group in New York.
But in the new, first-to-file system, inventors who want protection must shell out for a patent - even if they don't end up bringing the invention to market. "This is not only costly - not every independent inventor or small business has $7,000 to $10,000 to cover the cost of filing a patent application - but it will result in the filing of more patent applications," says Schibanoff whose organization estimates that the patent office has a current backlog of roughly 700,000 patent applications.
...Given these dilemmas, small-scale inventors and entrepreneurs are being forced to consider new ways to either get a patent passed or go without. Here are three tips for protecting new inventions going forward:
1. File as soon as possible.
Under the new first-to-file system, it might make more sense to file for a patent immediately, says Schibanoff. The reason? Under the new first-to-file system, "it does not make any difference who initially invented a new product or technology," he says. "The first filer is issued the patent. That means that an inventor is forced to file as soon as possible to prevent someone else from filing for the same patent."
2. Keep your invention secret.
Small businesses who want to protect their inventions without getting a patent might elect to take the trade secret route instead. "The problem is if people can reverse engineer it, you can't protect it," says Schibanoff. He added that it also helps to keep the secret close, between only a small number of trusted employees.
3. Get a partner.
If you do get a patent, you may need some help paying for the legal fees in the event your patent is challenged or if you need to pursue infringers. To bring an infringement case to trial, Schibanoff says, the costs could run to between $400,000 and $4 million. Enter: Patent enforcement companies. Similar to personal injury firms, patent enforcement companies like General Patent Corporation of Suffern, N.Y., typically get paid out of the settlements, royalties or awards they help generate for the patent owner. In exchange for a cut of the proceeds, patent enforcement firms typically cover all legal fees, as well as travel expenses, depositions costs and jury consultants.