The new 'first' in patent law

U.S. patent law just underwent a significant transformation.

As of Saturday, patent applications to the U.S. Patent and Trademark Office (USPTO) are judged on the basis of which inventing party is the "first to file" for patent protection. The new procedure replaces a more than 200-year-old application process that awarded patents to the party that was the "first to invent."

While the new procedure affects individual inventors and small companies alike, it is expected to more significantly change the activities of large companies and their R&D operations, according to patent attorneys.

Under the new scenario, companies are being advised to file low-cost provisional patent applications on inventions they may or may not deem significant, to protect their ownership of the invention.

Robert Kalinsky is a patent attorney with the Minneapolis law firm Merchant & Gould and has been busy advising clients on the new procedure.

An attorney with the firm for 12 years, Kalinsky's areas of expertise include mechanical, electrical and software components, licensing and litigation.

The bulk of Kalinsky's work is in the prosecution of patents.

A: You help the inventor or company prepare an application for a patent, file it and then go through the patent process.

Q: How long does that take?

A: It varies widely. The quickest it can get done is in about a year. Two to three years is pretty common and some of the patents I've been working on have been around for eight to 10 years.

Q: What prompted the change in the patent standard from "first to invent" to "first to file"?

A: It's mainly a desire to harmonize U.S. patent law with the rest of the world. This will make U.S. law more closely aligned with other significant patent systems in other countries. This is part of the America Invents Act [AIA] that passed Congress a couple of years ago and has been phased in. This is Step 3 and, I believe, the most significant. The current procedure dates back for years and it's been a long time since the U.S. has done anything this significant. For the garage inventor, it changes little. He or she does what they've always done. You come up with an idea, you raise funds and you file for a patent. For large companies that have established patent systems, this is an incentive to go to the patent office quicker.

A: There'll probably be an increased number of filings. Companies will file more quickly and more often. This is a good step. It adds certainty to the process. It's often difficult to prove when something was conceptualized. It's a very subjective and difficult process. The new procedure is more black and white because now conception doesn't matter. It was who filed the patent first. It's simpler than the old system.

Q: Will this reduce patent challenges?

A: That's called interference. When two entities claim they were first with a patent it can cost hundreds of thousands of dollars to sort that out. It's very time-consuming and very costly and very uncertain.

Q: What's the coolest patent you've ever handled?

A: That's hard to say, but the clients I enjoy most are the individual inventors who walk in very excited and passionate about what they've done. I have large institutional clients but sometimes I take cold calls from the street. I've done everything from tackle boxes to the latest in fiber optics and software on your PC and everything in between. I get to see something new on my desk every day.