U.S. Patent Prosecution Changes: How Will We Adapt?

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If you are in any way involved in the Patent Prosecution arena, then you are well and truly aware of the heavy duty changes made to the U.S. patent filing system, in order to better protect intellectual property and encourage further innovation and patent quality. The official buzz is that the changes will streamline the patent application process but…the jury is still out on that one!

From what we’ve been told, these changes have already had quite an impact on the local legal community.  An increase in high-tech activity, the rise of startups in our area, and an increased emphasis on globalization and technology in Asia has led to a marked uptick in investment in patent portfolios.  This has had a discernable impact on the number of patent filings within the past year. The explosion in this practice area has led to the seismic shift we at John Leonard have seen locally in the demand for patent expertise.

Effective Saturday, March 16, 2013, The America Invents Act (AIA) initiated the U.S. adoption of a first inventor to file patent system which will protect intellectual property, even at its earliest stages. Under the old “first-to-invent” system, a U.S. researcher with proper documentation could reasonably expect to win a patent dispute even in the event of another applicant having filed first.

Critically important to technology companies that represent a major slice of the New England economy,  the rise in U.S. patent filings could, and potentially already have had, an effect on your job. Further impacts will be seen in terms of the type of individuals who will be hired at your firm in the future, and indeed the overall hiring strategies of many law firms, as they try to ensure that they have the right resources to meet their clients’ needs. The truth is that, while those of you already in the patent practice area have been gearing up to better understand and adhere to these new regulations, there has been a noticeable trend of non-patent professionals moving into this practice area because of the boom in demand and the allure of higher earnings. We are currently working on over ten patent positions!

As part of our research for this blog, we asked a handful of Boston-based legal professionals to give us some insight into the impact these rules are having on their jobs as well as their perspective on the perceived increase in demand for patent-related expertise. While some say they haven’t yet encountered any changes in their daily responsibilities, others feel it working “in the trenches” and have been forced to educate themselves quickly and adapt their processes accordingly. For example, one former candidate of ours says she needs to take a few extra steps with each patent filed, maintaining strong knowledge of both pre and post rules.  “You have to really think hard and smart with each patent filed before you prepare forms…and triple check if the application was filed before a certain date.” Others notice changes in internal operations such as the assignment of Project Assistants to file Information Disclosure Statements (IDS) so Legal Secretaries can focus their time “following up on what was filed before the 16^th“.

Patent professionals with whom we have strong relationships say that in some cases at least, the transition has been far from seamless. We, like you I’m sure, anticipate a big learning curve.  During these next few months, the United States Patent and Trademark Office (USPTO) will be educating examiners on how to identify whether an application is subject to examination under pre or post provisions.  So we will not be surprised to see additional impact on the patent prosecution process emerge “down the pike”, further adding to the uncertainty and aggravation some are already feeling. 

For all you legal professionals out there, what other challenges are you experiencing? How has this new law impacted your friends in your local legal networks? Are you considering a move into the patent arena?

Legal Job of the Week

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-Legal Job of the Week-

Patent Legal Secretary

 May 30th - June 3rd

Patent Legal Secretary #19482-JLK

4+ relevant patent experience needed

Our client, a busy downtown law firm, is looking for a Patent Legal Secretary to join their Patent and Trademark Group.  Duties in this position include:

• Assisting in the preparation and filing of documents with the US Patent office, including applications, responses, and PCT filings
• Working with foreign agents to file direct national applications
• Completing filings and electronic filings with the PTO
• Preparing correspondence and administrative forms as needed

In addition to relevant experience, a successful candidate must have:

• Knowledge of PTO practices, docket reports, and TESS system
• Excellent organizational, communication, and interpersonal skills
• Strong Microsoft Word, Excel, and PowerPoint skills
• Bachelor’s degree preferred