Don’t Let A New Law Rob You Of Your Right To Protect Your Ideas

In mid-March the government shuts down your long-held right to test your invention in the market for as much as a year before filing for a patent. As part of the “America Invents Act,” this shut-down goes into effect on March 16. The U.S. Patent Office has already written the rules. The large companies will not suffer because they safely perform development in-house or under their carefully shepherded confidentiality agreements. In contrast, small companies and inventors lack those systems and billions in backing. Further, small companies need to publicly promote and raise outside capital far earlier in development. As of March 16, the little guy who makes his invention public runs a high risk of losing ownership of his own idea because the owner is the “first to file” on it. How did this happen?

For decades the US had a “first-to-invent rule” that worked well over 99% of the time. On rare occasions, two parties filed patent applications for the same idea at almost the same time and had the right to challenge the other party’s invention date and prove theirs was earlier. They initiated the patent office process called an “interference.” Interferences have been so rare that most patent attorneys refused to handle them and referred them to legal specialists. In the hands of those few specialists, the interference process was expensive, but usually a small fraction of the cost of a patent law suit. Here is where those “inventor notebooks” were worth their weight in gold – they proved who first had the idea (conception), who first brought the idea to life (reduction to practice), and thus who won. Sure, interferences had their problems – expense and delay – but only in the case of highly lucrative inventions did the costs run up. And incurring those costs was a smart business decision because the costs were generally less than 1% of the profits achieved!

The rest of the world has had the “first to file” rule. Canada was like the US until switching to “first to file” about a decade ago. What was their experience? Many factors stayed the same, but individuals and small companies filed fewer patent applications. Canada, like the US, experiences its greatest job growth in small workplaces and factories. When those file fewer patent applications, their new products and services are not protected. Once a new idea hits the marketplace, finds significant sales and starts to make a profit, imitators race to sell a cheaper imitation and steal the market need created by the smaller company’s investment. But imitators can be slowed or stopped with patents and other intellectual property protection – making inventor and small company profits more sustainable – adding to job growth. But the “first-to-file” system discouraged Canadians from filling – and will be expected to have the same effect on US.

Seeing the new law looming like a guillotine over the heads of her many inventor and small company clients, 24-year patent attorney Barbara Luther ( created a solution – a highly efficient way to protect inventions during the vital developmental process. Ms. Luther has obtained patents for clients that have licensed for a billion dollars and served as the cornerstone of publicly traded companies. Because of this huge unmet need, Ms. Luther originated a way to produce full-bore, high quality provisional patent applications at a fraction of the typical price. These temporary, one-year patent applications all feature the same information and meet the same standard as the nonprovisional patent application filed after the year expires. In fact, with small modifications, often only the addition of the inventor’s new variations or data generated during the year, Ms. Luther efficiently converts her new provisional applications into nonprovisional patent applications. It is the nonprovisional patent application that undergoes the full patent office examination process resulting in a patent. The Luther Law Firm is already experiencing its own cheap imitators who produce “cookie cutter” patent applications; a page or less describes the invention and the rest of the sections contain standard language with no mention of the invention; this minimal patent application offers scant protection – and requires a new investment in a full-blown patent application after one year.

What do experts in the field think about this new method of producing patent applications? A widely reported ranking system for law firms ranks the largest firms numerically by their reported million-dollar pay to senior partners who supervise squads of lower-paid attorneys. Unquestionably patent attorneys at big law firms with their high overhead and pyramid-like structure hate it and assume the Luther level of cost savings can only be done as a “cookie cutter” patent application. But patent attorneys in smaller companies have been questioning for years why the prices of patents have been soaring when most other legal and non legal costs are contained or decreased. Ms. Luther has been associated with large, highly respected firms in Chicago, Silicon Valley and Phoenix. But she also served as a patent attorney in a small company where she learned how legal costs crater the budget, leaving little money to market or expand. In that capacity, she swiftly took charge to control costs by creating highly efficient ways to file dozens of patents a month with a small staff. She has taken her high-efficiency, high-quality work to inventors and small companies, where she is on a mission to partner with them in their development. Ms. Luther is the critical link in the vital process of bringing innovations to the marketplace which not only creates value but also revenue sustainability and improved lives. Contact her at 480-766-8064.

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