Innovation Reboot – Patent – United States

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Acceleration of Adoption of New Technologies

The COVID-19 crisis has accelerated change in the way companies in all sectors and regions do business. Digital adoption has taken a quantum leap. Advances in AI, robotics, and automation have accelerated over the course of the pandemic. The mRNA vaccines, stemming from technology that was not widely accepted just a short while ago, were developed and deployed to billions of people in a fraction of the time for a normal vaccine process. Consumers have moved dramatically toward online channels and companies and industries have responded in turn. The implementation of digital infrastructure across all industries has reshaped the way we work and allows for new collaborations across geographies and sectors.

Staying competitive in this new environment requires new strategies and practices. Innovation is essential to competitive advantage. And intellectual property (IP) is essential to protecting innovation. Focusing on the latest IP issues in the United States or patent strategies across Europe and Asia may not have been at the top of your list while your company was focused on saving jobs and even lives. Companies that lack strategic patents are at a disadvantage. But if your company hit the pause button on patenting during the pandemic, how do you catch up?

Provisional Applications

With relatively minimal effort, companies can quickly file a provisional application. Even during a pandemic, the applicant that files first will receive priority over others. If you or your company cannot afford full application drafting and filing costs right away, filing a provisional application for a nominal sum can allow you to stake out your place in line and provide you with a one-year grace period to continue to analyze the market , innovate, develop a global strategy, and raise additional capital. A well-drafted provisional application may attract investors and funding while protecting your ideas.

Act Quickly

If you filed provisional or foreign applications but unintentionally failed to complete the US utility filing within one year, US law permits an applicant two more months to petition for restoration of the right to claim priority to or benefit from a foreign or provisional application previously filed.

If you are a company with a small entity status and are developing a product or process related to COVID-19, you may qualify for reduced or waived fees and expedited processing of your application under the Modified COVID-19 Prioritized Examination Pilot Program if filed by June 30, 2022.

Prioritized Examination

Applicants may also request priority examination in the US under a process called “Track One” which offers examination and issuance of a patent, if the invention is patentable, within one year. On average, patents are granted under this provision in about eight months, though we have seen some granted faster.

Confidentiality Agreements

Innovation can foster a level of excitement that can lead even experienced business leaders to make unadvised disclosures, such as publicly describing the invention and undermining the company’s ability to maximize the value of the innovation. Confidentiality agreements can help as they can be an important tool for protecting against a public disclosure before your protection is in place. In many countries, a confidential disclosure does not qualify as a public disclosure. This can allow your company to make early disclosures with potential licensing partners, suppliers, manufacturers, or other third parties.

Best practice remains to not publicly disclose the innovations until there is adequate time to think through the innovation and improvements and to be the first to file for patent protection. But if disclosure must be made publicly, at least file a provisional patent application in advance, securing your company’s IP rights. And if investment or licensing discussions with third parties are necessary, make sure you have a confidentiality agreement in place before those discussions begin. In this way, your company is best able to protect its exciting new technologies.

Unitary Patent and the Unified Patent Court in Europe

Businesses that reach Europe and have not already started preparing for the Unified Patent Court (UPC), need to start becoming familiar with the new system and take action now. The UPC is expected to start operations in the latter half of 2022. The UPC will be nearly a one-stop-shop for European patent enforcement, representing an opportunity for patentees, but also a threat as their patent rights could all be revoked in a single set of proceedings. The stakes are high. As well as serving as a forum to assert multiple European patents simultaneously, the UPC will be the exclusive forum for enforcing the unitary patent: a single patent across participating EU member states, also referred to as a “European patent with unitary effect.” The UPC is likely to change the risk-reward ratio for the enforcement of patent portfolios in Europe. The UPC offers a patentee the potential to recover from a huge market, at a relatively low cost, and in a single set of proceedings, making it an attractive proposition for those looking to monetize their portfolio, even in parallel with national proceedings.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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