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Everything in-house legal advisors need to know about the new US Patent Reform

Posted by: Laurence Simons 20/09/12

Monkey shoes. They are like shoes, but for your monkey. We just invented them. That is our invention. Don't you dare steal it. Yes, they can be in the shape of bananas. Little slippers for your monkey in the shape of bananas. We're going to make Ugg-money with this idea.

Why are we inventing monkey shoes today? Because it's the one-year anniversary of the America Invents Act (AIA), which means there are some sweeping changes being made to the patent process that affect mad individuals messing around at home as well as corporations with huge expensive R&D departments. Basically: if you are an in-house lawyer at a major tech firm or an insane genius with a cellar full of limbs, you're going to need to know about these changes.

Mostly, the AIA changes being made this month alter the landscape of the post grant review procedure, as in, 'what happens after you are granted a patent'. Obviously, patents still need to be filed - and the price to do so is being edged up sharply - but if a challenge kicks off once a patent has been granted, things are handled a little differently now.

Take, for example, our previously mentioned and enduringly stylish range of monkey shoes. Say, for example, a challenger who boasts a range of ape boots thinks our product is too similar. What now? As of this week, where previously the US Patent Office would have ruled on patent validity contests in-house, they will now be handled by administrative trial courts. So see you in the dock, Ape Boots.

But that does mean that patent filing is a slightly more complex (for the Patent Office, anyway) and costly affair, with trial-like review procedures being brought in at the filing stage with the associated costs to file rising sharply - up to circa $27,000 - as a result. It should put a dampener on both frivolous filings and challenges, which as an upshot means entrepreneurs and businesses can bring their ideas to the market sooner, unimpeded by upstarts who sell boots for apes as though anyone would even buy those.

This is just round one of the reform, though. The changes set to be introduced in March 2013 are more revolutionary, so those in plum in-house legal jobs should start boning up on their patent law now. Basically: the US is moving from a first-to-invent system to a first-to-file system, meaning the file date of any budding patent is even more crucial. Certain prior art rules will be brought in so that publically available materials can be used to swing an invention claim one way or another, but overall these reforms should streamline the patent system in favour of the businesses who regularly use it. Look out for Monkey Shoes in the shops from early 2013.