The America Invents Act has attracted a lot of buzz. Whether it spurs job creation and innovation remains to be seen, but in this article I’d like to focus on the provisions of the Act that are most relevant to inventors and small companies.
Change to First-to-File
Perhaps the most publicized change arising from this bill is the transition from the current “first-to-invent” system to a “first-to-file” system. This will move the US patent system closer in line with that of the rest of the world, but the first-to-file system increases the pressure to file an application as soon as possible. For most small applicants, spending time to raise funds or obtain a licensee now runs the risk of losing priority to an earlier-filed application.
New Micro Entity Status
Of particular interest to the small applicant is the creation of a new class of inventors with the Act: the “micro entity.” Previously, a 50% reduction for certain fees was available for applicants qualifying for small entity status. Under the America Invents Act, micro entities would be eligible for a 75% reduction in fees.
Micro entity status will certainly be appreciated by the smallest applicants especially because of the scheduled…
Increased Service Fees
Unfortunately, the America Invents Act also includes a 15% bump in all patent fees. The USPTO has posted a revised fee schedule on their website.
Mitigating the Impact
Despite the new micro entity status, the provisions of the America Invents Act are likely to cause financial strain on inventors and small companies. However, there are a few tips that you can leverage to mitigate the impact. In an earlier post, I discussed how applicants can reduce costs by getting familiar with the patent process and minimizing the role of their law firm. In light of the new first-to-file system, applicants should also consider filing a provisional patent application. A provisional application is a relatively inexpensive way to get an earlier priority date, while simultaneously buying some time to raise additional funding or license the invention.
Finally, applicants should consider the full scope of their filing strategy. While it will now cost more to obtain a US patent, applicants seeking international patent protection may be able to reduce the cost of foreign filing by outsourcing parts of the process (PCT national stage entry, European validation, annuities, etc.) to specialist providers.
If you’re curious to compare foreign filing costs, you can register on our platform and get an instant quote.