Looming patent changes prompt push to file

Photo/Tim Greenway FILE PHOTO Tony Jabar, CEO of Cerealus, next to paper being created with Ceregel, a technology that enhances paper's strength and reduces waste, in the Process Development Center at the University of Maine in Orono. Jabar says his company pushed up the patent application deadline for the new technology to keep consideration of the new invention under the current first-to-invent system, which is set to change March 16, 2013.

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By Matt Dodge

A change to U.S. patent law coming this month has some Maine companies and inventors scrambling to file under the current system, which patent law authorities in the state say is a more forgiving process.

On March 16, the U.S. patent system will switch from a first-to-invent to a first-to-file standard, a change designed to simplify the process and bring the country in line with global standards.

Leonard Agneta, director of the Maine Patent Program at the University of Maine School of Law's Center for Law and Innovation, says there are cases where the new law could be advantageous but that it largely makes securing patents more difficult for smaller, independent companies and inventors who don't have the extensive legal and R&D structure of a large corporation.

Agneta says he's encouraged numerous applicants to file before the March 16 deadline.

"I've probably spoken to three or four people a day for the last month on this, and maybe half are considering filing under the old law," says Agneta. "Anyone ready to file [a patent] should begin preparing their application and file right away."

Tony Jabar, CEO of Waterville-based Cerealus Holdings LLC, a manufacturer of biopolymer-based products for the pulp and paper industry, says his company recently sped up filing a provisional patent application. That's because under the current system, the company can backdate its invention of a starch-based filler that increases the strength of paper.

Jabar says the company bumped up the application filing from an April 15 deadline to file at the end of February.

"Under the old law, if you could demonstrate that you invented something first, then you were the only one who can patent that particular technology," says Jabar. "Under the new law, if we invented something a year ago and over the course of a year someone else figures it out and they made an application first, they would be entitled to the patent over us."

Jabar says getting in under the current system also allows any changes or new claims filed in relation to the patent to be backdated to the invention date. Under the new system, Jabar says, any alterations to the patent application would reset the clock.

"If I had some potential patentable inventions ready to go on my desk, I would file them now because I have the paper trail going back to when I invented it," Jabar says.

For Cerealus, the new system's preference for those filing first will also necessitate a tightening of privacy and disclosure practices as the company tries to safeguard its innovations and intellectual property.

"I think this will change things a lot," says Jabar. "I think people will be filing more applications earlier and will be more reticent to share information."

Kent Peterson, president and CEO of Fluid Imaging Technologies Inc. in Yarmouth, agrees. He says smaller companies must be more vigilant when it comes to protecting their proprietary information and knowing when to file.

"It should send a message to this smaller company or single inventor to [focus] on not just the inventing part but also the administrative part to be able to capture the economic value of what they're inventing," he says.

Beverley Hjorth, director of Preti Flaherty's Boston-based intellectual property group, says the new law also broadens the definition of prior art, meaning items in the public domain — like books, patent applications and other documentation — that may be used to contest the novelty of a particular patent.

As the country moves to first-to-file, Hjorth says prior art available before the filing date for a patent — not the invention date — may be used to challenge a claim to an invention.

"That's what tends to make this a race to the patent office," Hjorth says.

Leading up to the March 16 deadline, Hjorth says she's been busy preparing applications for companies looking to file under the first-to-invent standard.

"We're working pretty hard up to March 16," Hjorth says. "We're kind of like tax accountants."