New Year’s Resolution for your patent strategy: 5 steps to an effective defense for prior art rejections

March 2013 is just around the corner, and with it come the new patent laws initiated by the approval of the America Invents Act. This New Year’s, make a resolution that will benefit your patent strategy: implement a 5-step process to create an effective defense for prior art rejections under section 102(a) (2) of the new patent laws.

The first-inventor-to-file rule is quickly coming into effect. It has probably been on your to-do list but has been delayed over the past year in favor of other projects and tasks. If you have not already done so, your first priority in 2013 should be to rehab your R & D policies. Failure to implement simple measures could mean loss of valuable patent rights, licensing revenues, and competitive advantages in your industry. A small investment in time and legal advice from your counsel will avoid big financial losses in the new patent era starting in March 2013.  You can create an effective defense strategy in 5 steps:

  1. Revise and implement a streamlined invention disclosure and review process.
  2. Be sure your inventors keep good records of their R & D work and potential inventions.
  3. Implement a tracking system for all invention disclosures by the inventor (so you can show derivation or take advantage of other defenses).
  4. Your employee documents and policies should be updated to require assignment of all inventions to the company.
  5. Parallel provisions should be included for contracts with independent contractors and consultants. If the technology is going to be developed under a joint research project, this should be memorialized in writing and require an invention assignment.

The patent laws changed. Be sure your policies change, as well, to take advantage of the new patent laws.