In a recent article in D CEO, intellectual property attorney Chris Rourk discussed the impact of some of the provisions introduced by the America Invents Act (AIA). The legislation was passed just over five years ago, and created new rules to solve many of the problems that formerly plagued the patent system.
“Start-up companies might find themselves in a catch-22 situation, where seeking the funding that they need to afford patent protection could result in the loss of patent rights.”
In the article, Chris explained how the “first-to-file” provision has led to changes for inventors and startups in search of funding. Because most investors refuse to sign non-disclosure agreements, Chris explains that, “Start-up companies might find themselves in a catch-22 situation, where seeking the funding that they need to afford patent protection could result in the loss of patent rights.”
As a result, some startups have filed their own informal provisional applications to mitigate this risk. However, Chris warns that companies should be careful not to let too much time pass between when an informal provisional application is filed and the hiring an attorney to file a utility patent application, as mistakes can potentially result in the loss of IP rights.
Chris also discussed how the AIA’s “prioritized examination process” has created a new strategy to help companies get to market more quickly. This provision entitles applicants to a “first office action” within six months and a final disposition within a year. Chris gave an example of his client who invested about $40,000 in accelerating their patent and was able to secure $2 million in investments because they could prove that the product was protected.
For more information, read “A Look at the Five-Year Impact of the America Invents Act” in D CEO.
Christopher J. Rourk represents a wide range of businesses in intellectual property matters. He has prosecuted over 300 patents in a variety of technological fields. He is skilled at using strategic post-grant proceedings to invalidate patents asserted against his clients. Chris is AV Rated by Martindale-Hubble and was recognized as a Legal Lion by Law360 for his work on Magnum Oil Tools International Ltd., case number 15-1300, in the U.S. Court of Appeals for the Federal Circuit.