The Rules of the Road Have Changed, But You Should Still Look Both Ways

A few weeks ago, we told you about the first changes in more than 60 years to the American patent process. Under the new Leahy-Smith America Invents Act, the patent process has shifted from a “first to invent” to a “first to file” structure. You may have heard the advice to file “quick and dirty” provisionals on everything you come across. But Laura Schoppe, VP of Strategic Alliances for AUTM, says otherwise. Here’s why.

It’s not cost effective. As many as 60 of every 100 disclosures filed with a tech transfer office don’t have commercial potential. That wastes both time and money. It takes 3 to 10 hours to do the paperwork for a filing, even a “quick and dirty” filing. If you file a provisional on everything you come across, you’ll be wasting up to 600 hours a year! And although the fees are lower for provisional filings, you’ll still waste thousands of dollars on technologies that won’t find commercial success.

A quick and dirty filing starts the clock as well. Once you file a provisional, you only have one year to file the full patent application. It’s better to take the time to confirm the market potential of a technology before filing.

So what does Schoppe advise tech transfer offices do under the new system?

Rapidly screen every invention disclosure and determine if the technology has market potential before filing. Why? Screening saves all the time and money that is wasted by automatically filing everything. You’ll also file a stronger application if you have a market-based assessment behind the technology – so take the time to do an assessment and interview industry experts.

The rules may have changed, but common sense hasn’t. Don’t file blindly – make strategic and informed decisions first and foremost. Then once you recognize the commercial potential and have completed thorough research, make the moves to get your provisionals filed.

Do you agree with Schoppe’s suggestions? Or do you see advantages to filing quick and dirty?

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