The impending shift from a “first to invent” to a “first inventor to file” structure under the recently passed America Invents Act is causing quite a bit of turmoil in the technology transfer industry. The U.S. Patent and Trademark Office has provided some explanations via FAQs and a letter from director Kappos, yet the rumblings continue. Some in the industry suggest that the appropriate response is to file quick-and-dirty provisionals on virtually everything that comes in the door. I’m sure technology transfer offices (TTOs) hear this advice. But I sincerely hope they do not heed it.
“Why not?” you ask. “What’s wrong with using the invention disclosure to file a quick-and-dirty provisional patent application to ensure we’re the first to file?” I’ll give you three reasons.
1. It’s not cost effective: Fuentek’s experience with a range of clients has shown time and again that as little as 35% to as much as 60% of the disclosures filed with a TTO do not have the commercial potential to warrant patenting. If your TTO gets 100 disclosures a year and files quick-and-dirty provisionals for all of them, you are wasting time and money on 35-60 unnecessary filings.
- Wasted time: Even a quick-and-dirty filing takes 3 to 10 hours to pull together the paperwork. That means you’re wasting a minimum of 100 hours (and maybe as many as 600 hours!) a year filing provisionals for technologies that are highly unlikely to have licensing or other tech transfer success. Wouldn’t it be better to spend this time proactively pursuing the marketing and negotiations for technologies that do have market potential?
- Wasted money: Even with the lower fees for filing a provisional, you are still wasting thousands of dollars on unnecessary filings. And if you pay an outside attorney for this, that dollar value goes even higher.
2. It compromises coverage: The patent attorneys I know would cringe at the concept of a quick-and-dirty filing. They know that such a phrase is nearly always synonymous with insufficient coverage. And if you don’t have good coverage, you’re likely to have issues later.
3. It starts the clock: The longer you have to confirm that the market is ready for a technology before incurring the expense of a full, non-provisional patent, the better. But filing a provisional limits that time frame because you have only 1 year to file the full patent application. To file provisionals in an automatic fashion without first considering the market is imposing this limit unnecessarily.
So now you may be wondering, “Okay, so what should TTOs do instead?” The answer is simple:
Perform a rapid screening on every invention disclosure to determine if the technology has enough commercial potential to warrant the more in-depth step of a market-based assessment. If it passes, and if time permits—that is, if there isn’t an impending paper, presentation, or other public disclosure forcing your hand—do the assessment as well.
Why does Fuentek recommend this approach? Again, I’ll give you three reasons:
1. Screening first saves time and money: If you file blindly on everything, you’re bound to be wasting resources by filing more often than is appropriate. We have done the math and run the numbers on this before, albeit in the context of more expensive nonprovisional patent filings. Nevertheless, I am sure that any TTO could find something better to spend their time and money on than unnecessary quick-and-dirty provisionals.
2. Market-based assessments yield information that enables better filings: The better you know the market and how your technology might be used in it, the stronger you can make the claims in your patent filing (be it provisional or non).
3. You don’t have to have coverage to gain market perspective: Because market-based assessments include interviews with industry experts, many people presume that patent coverage must be in place first. Not true. It is possible to interview an expert without revealing proprietary or sensitive information about an unprotected technology. How do I know? Because we’ve done it hundreds of times and never had a breech. So, yeah, it can be done.
The bottom line: Make informed decisions, don’t file blindly. Make strategic choices, don’t file wildly. It doesn’t matter whether the rules are “first to invent” or “first inventor to file.” A screen-then-assess approach is the most effective and cost-efficient way to make informed, strategic decisions.
- Peruse the Technology Evaluation section of our newly updated Insights section (we blogged about the Insights update last week).
- Consider our webinars that provide a step-by-step process for technology screenings as well as how to use market-based assessments in planning for proactive, strategic technology marketing.
- Check out our IP Management services and then contact us to discuss how we can help your TTO be proactive and strategic in your commercialization efforts.
What do you think about the switch from “first to invent” to “first inventor to file”? I’m sure our non-U.S. readers have some thoughts about this, seeing as they have been under “first to file” rules for decades. Add a comment below or send me a private message.