In 2013, The Patent Reform Act Will Force a Transformation of R&D Management and Strategy

In 2013 Patent Reform Act Will Force a Transformation of R&D Management and Strategy:

The most significant change to US patent law since it’s inception will come into effect in March of 2013.  In order to gain patent protection for their inventions, almost every US based innovation, R&D and new product development organization will be forced to adapt to the Patent Reform Act’s dramatic changes.  The law will bring changes to the kinds of innovations that are patentable, who owns inventions, who can use other companies inventions, and how patents are challenged and defended.  These changes will affect the costs, processes and strategy of innovating in America.

Be Afraid, Very Afraid:

The Patent Reform Act (known simply as Patent Reform), was officially the “America Invents Act” (AIA).  The Patent Reform Act was signed into law in September of 2011.  It’s major provisions will go into effect on March 16, 2013.  These provisions will demand a massive shift in activities impacting R&D and new product development (NPD) processes, that most US based companies and inventors are unprepared for.  Patent reform will demand the following from innovation, R&D and new product development organizations that rely on intellectual property (IP):

  • Will change innovation, R&D and NPD strategy
  • Will change the time available for innovation
  • Will change how much budget is available for innovation
  • Will change which innovations can be protected



Patent reform encompasses many changes, but for the purpose of R&D, innovation and new technologies, we’re going to focus on these two major provisions:

  • First inventor to file
  • Prior User Rights
First Inventor to File:

Starting on March 16, 2013, the US will change the definition of who has the right to be granted a patent for an invention.  The US will institute a first-to-file system, also called “first inventor to file” system, which grants the right of a patent for a given invention to the first person or organization (the first inventor(s)) to file a patent application for protection of that invention, regardless of the date of the actual invention.

First inventor to file has three major effects on how innovation is patented and what can be patented:

  • The first inventor to file an application at USPTO will be granted the patent for an invention.  A subsequent application can’t invalidate a patent based on an earlier invention date
  • The first patent issued for an innovation cannot be invalidated unless a subsequent patent owner can prove the invention from derived from prior art.
  • The definition of prior art has been expanded to include worldwide patent and marketed products.  An innovation patented in another country or marketed publicly in a foreign market cannot be patented in the US.

The Effects of First To File on New Product Development:

  • You will have decide what to file with USPTO as early as possible
  • Open market testing may constitute public disclosure; however, secret ideas may be at risk as well
  • Patenting strategy has to be an integral part of new product development strategy and processes.
  • May significantly affect open innovation initiatives and the willingness of inventors to disclose early-stage and unpatented ideas.  It is expected that savvy inventors will not disclose inventions until they are issued patent protection.

Prior User Rights
A key provision of patent reform affects the rights companies have to undisclosed inventions.  With the prior user rights provision, inventors have the right to ongoing use of undisclosed inventions (if prior use was greater than a year), even if another entity is grated a patent for the invention (due to first to file)

An example may be a modification to a piece of manufacturing equipment that is used at a single plant.  If another inventor independently develops the same invention and is granted a patent for it, they would not be able to sue for infringement if the manufacturing plant can prove it has been using the invention for more than a year.  Patent reform law allows the manufacturing plant to continue use of their invention, limited to its existing use.  The manufacturing plant cannot expand the use of the invention without infringing.  However, if the invention was filed by a university or technology transfer office, the manufacturing plant is not granted the protection of prior use and can be sued for patent infringement by the patent holder.

The Effects of Prior User Rights on New Product Development:

  • The use of secret innovations can be severely limited once another party is granted a patent for the same invention
  • Need to continually review agreements for research and innovation conducted with Universities and other research institutions

Four Reforms to Innovation Management Will be Required to Address Patent Reform:
In order for US based R&D, NPD and innovation organizations to adapt to the changes demanded by patent reform.  The changes required are top-down in nature, reforming the processes, strategy and investments of innovation organizations. The changes we propose will not only improve a company’s response to patent reform, they will improve all aspects of R&D and NPD activities.  The following four strategic tools link to valuable information what needs to be done in order to respond to 2013’s patent reform law:
Integrate a Next-Generation Innovation Process:

Develop a Technology and Patent Portfolio Strategy:

Implement Technology Platforms:

Practice Objective R&D Portfolio Management:

Utilize New Tools for Technology Competitive Intelligence:

More thought leadership on best practices can be found here, and in future articles.

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