Issue link: https://read.dmtmag.com/i/490948
I DA U N I V E R S A L M a rc h -A p r i l 2 0 1 5 11 LEGAL LINE Robert W. McIntyre IDA Association Legal Counsel Continued on page 52 D eveloping new products is already diffi cult enough, whether it is a "clean sheet of paper" project or reverse engineering of an existing OEM or Tier One product, without fi nding yourself in a legal trap down the road. A key issue facing companies today is how to protect what you have done, whether as a trade secret or as patent protec- tion for a new product. In this situation, when is just as impor- tant as how, because obtaining patent protection is based on two interlocking, but sometimes confl icting, deadlines. e fi rst, and perhaps most important, deadline is actually fi ling for patent protection. is can take two forms: a "provi- sional" patent fi ling or an actual patent application. e fi lings are similar, but they diff er in one aspect and have separate legal eff ects on any fi nal patent protection. e fi rst type of fi ling, the "provisional," is basically an outline of the invention that will be patented. e advantage of this type of fi ling is that it draws a line in the sand with a recorded fi ling date that establishes your fi ling against any later fi lings for similar competing inventions. e drawback of a provisional fi ling is that the claims of the invention are locked in at this point and cannot be changed until a er the formal patent is fi led. e patent offi ce will take no action until the full applica- tion is fi led. e second type of fi ling is a "full content" patent applica- tion, which again sets the date of record for fi ling the applica- Show and Tell tion against later, and potentially competing, similar applications. e advantage of this path is that the entire invention and all of its descriptive informa- tion is of record and starts the clock at the patent offi ce to begin examining the application and (hopefully) grant the patent down the road. e disadvantage is that a full application takes time and resources which may delay the process before fi ling. Why is this legalistic process important? Because the recent America Invents Act changed the rules, from a "fi rst to invent" rule to establish which competing inventor seeking a patent wins to a "fi rst to fi le" rule which estab- lishes that the fi rst inventor to fi le a patent application "wins" the race to establish the date at which the invention was "created" by any competing inventors. is new rule has led to large corporations around the world fi ling a tsunami of U.S. patent applications to stake out claims for inventions which may or may not exist beyond brain- storms in the R&D department. Two more critical fallouts have resulted from this situation: First, the Patent Offi ce has been overwhelmed and has, thus, kicked out the time line for the fi ling allowance of a patent to more than four years. Second, companies have fl ooded the Patent Offi ce with inventions that not only may never see the light of day, but also are in many cases, patents created without substance simply to shut out future compe- tition. e present eff ect of this governmental process is that while the intent was good for simplifying the process of deter- mining the fi rst inventor, the unintended consequence has been use of the new rules by corpora- tions large and small to try to cover every technological possi- bility with a fl ood of patents. e end result may solve one problem, but the core of the patent system and concept – protecting and encouraging genuine inventions of useful new products – has been transformed. It now rewards inventors who have the money and legal muscle to paper the Patent Offi ce with every bright idea that might someday be commercialized. Now facing early decisions as to whether or not to start the Patent Offi ce clock and the lawyers' billing clock, research and development decisions and commitments are similarly accel- erated. Most non-OEMs lack the resources or budget to paper the Patent Offi ce before the practi- cality and economics of a new product are sorted out. is new pressure brings a company into a new legal minefi eld of confi dentiality and disclosure rules and imperatives. In all of the following discussions about practical applications of these matters, the overriding and "full stop" rule is that a patent