In early January 2011, Ridgefield resident John Weatherley”™s patent application was published on a toy bank, with slots to receive coins for saving, spending and charity, and facades to resemble a bank, a storefront and a shelter.
That leaves room on the fourth side for a research lab, if Weatherley is inclined to give youth a nudge in that direction.
For a third straight year, patent applications are down in Fairfield County, even as intellectual property attorneys ready for implementation of the America Invents Act beginning this year, which introduces the “first to file” system for awarding patent protection used by the rest of the world. That eliminates the “first to invent” system the U.S. has used that has allowed individuals and companies to claim patent protection even if filing their application after someone else.
“This legislation transitions the U.S. from a focus on what inventors do in secret, to a focus on what they do to make their inventions available to the public by disclosure or sale of a product,” said David Kappos, director of the U.S. Patent and Trademark Office, speaking in Brussels in early December. “The America Invents Act ”¦ more effectively (matches) the rate and pace of the patenting process to the rate and pace of invention, and the rate and pace of commercialization.”
Under first-to-file, inventors can only claim protection if they can prove they have diligently pushed ahead to develop and use the technology or innovation in question.
If federal data is any indication, inventiveness is on the decline in Fairfield County despite Connecticut”™s status as having one of the top patent award rates in the nation as measured on a per-capita basis, and despite the opportunities spawned by mobile communications and other areas. After two straight years of double-digit declines, in 2011 the U.S. Patent and Trademark Office was on track to publish 6 percent fewer patent applications from Fairfield County inventors compared to 2010. The pace for approximately 1,350 applications in 2011 represents the lowest figure since 2002, when the office published just 1,225 applications from local inventors.
Patent application data represents an inexact measure of local inventiveness, given the trademark office”™s delays in reviewing applications before they are published online ”“ for instance, Weatherley filed his patent in July 2009, with the office taking a full 18 months to finally post the application. Still, trend lines appear over time, and the last few years those trend lines have been sliding in a downward direction, with Fairfield County patent applications having peaked in 2006, when 1,950 applications made it through the office”™s review process.
According to Chris Capelli, an attorney in the Stamford office of Edwards Wildman Palmer L.L.P., the new law represents the most significant overhaul of the U.S. patent system since 1952.
Capelli notes the new first-to-file system adopted by Congress does provide a one-year grace period for inventors to file applications, intended to prevent any subsequent third-party disclosure from being considered prior art. And a new post-grant review process allows a patent to be challenged on any grounds related to patentability within nine months of patent grant.
The first-to-file system does not kick in until March 2013, the final step in the America Invents Act that includes more than 35 other provisions. Among changes already implemented, a 15 percent surcharge has been tacked onto all trademark office fees and any non-electronic applications will be slapped with a $400 processing fee.
So-called micro entities, however, now enjoy a reduced fee provided they do not exceed a set income threshold and are not listed as inventors on five or more prior patent applications.
