Patent Management for Small Business in the Wake of the America Invents Act


With the implementation of the American Invents Act, the United States patent system is changing from a first-to-invent system to a first inventor to file system.  Without going into all of the nuances and rules of the new act, the basic change is that the patent will be awarded to the first inventor to file the invention with the US Patent Office.

This race to the Patent Office necessitates a review of any organization patent management system.  The change in how patents will be awarded inevitably requires organizations to manage and move on innovations quicker than ever before.  Such a system should include the following:

Documenting innovation.  This provides a record of inventorship, and also a time line as to what was invented and when the innovation occurred.    An existing inventor notebook system that documents innovation and that meets the evidentiary requirements should continue to be implemented.

This group should include all of the key players that have decision making capacity to manage the organization’s IP.  Typically this should include R&D, business development and legal or IP.  This group should meet either in person or virtually on a regular basis.  A virtual or hybrid system may be more appropriate as the group should have the ability to act quickly when innovations are disclosed.

The duties the IP committee would include:

Innovation assessment-whether to iniate a patent application or patentability assessment.  All innovations cannot usually be fully protected, so the group may need to come up with a process for evaluating the developments and prioritizing them based on company needs.

Provide strategic input-with existing filings, the committee may need to provide input on prosecution strategy, and where to file for patent protection.  Geographic patent protection should coincide with present and future business activity as well as possible competitor activity.

Manage issued patents-after patents have issued the decision to continue to pay maintenance fees may be outweighed by business realities.  If your company is no longer making or selling a patented product, does it make financial sense to continue to pay patent maintenance fees if the innovation is obsolete?  Alternatively, it may make sense to look at possibly out-licensing the technology.

Complete the circle-once a patent has reached the end of its useful life, it is typical to file it away.   However, it may be appropriate to look at whether the innovation in question can be given new life with an innovative improvement.  Also, circling back with customers to see what improvements they would like to see on this product is a good way to jump start innovation.

Making sure your assets are protected is considered a best business practice.  Having the right person to help you make that decision is critical.  The Law Office of Kathleen Lynch is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at