For example, under existing U.S. patent Law (35 U.S.C. 112, first paragraph, in part), an inventor:

“… shall set forth the best mode contemplated by the inventor of carrying out his invention”.

The above part of existing U.S. patent law has not been expressly deleted by the America Invents Act.

However, the America Invents Act has expressly changed a section of U.S. patent law dealing with defenses in validity or infringement actions (35 U.S.C. 282) as follows:

“…the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid. ” (As amended by America Invents Act, 35 U.S.C. 282 (3)(A)

So is an inventor required to still set for the best mode in a patent application?

The answer, at least for now, is yes.

35 U.S.C. 112, first paragraph clearly states that best mode shall be set forth.Even though failure to set forth the best mode may not result in a canceled or invalid claim, there may be other negative consequences of failure to set forth best mode.

In any case, patent attorneys and patent applicants would be wise to follow an abundance of caution approach and continue to set forth best mode.

Let’s start with something all patent applicants, especially small companies and solo inventors, care about:  What’s this going to cost me?

For now, it appears that it is going to cost all patent applicants, small or large, more money.  As of September 26, 2011, many, if not most, patent fees will increase by about 15%.

Wait a minute (you may say), I thought this article was about how patent law changes would reduce my costs.  How does this 15% increase reduce my patent costs?  The answer is it doesn’t.

However, the America Invents Act also creates a new category of patent applicant called a “Micro – Entity”.  If you are familiar with a “Large Entity” and a “Small Entity” under current United States Patent Law, you know that a “Small Entity” gets a 50% reduction in various patent fees, as compared to a “Large Entity”.   Somewhat similarly, the America Invents Act will likely provide a 75% reduction in various patent fees for a “Micro – Entity” versus a “Large Entity”.

“Will likely provide?” that sounds like something a lawyer would say.  If I am a “Micro – Entity”, do I get 75% off or not?  The answer as of September 21, 2011, is hopefully, but not yet.  The United States Patent Office, in a press release dated September 21, 2011,   states that:

“Micro Entities

At this time the USPTO may not offer the micro entity discount (75%) on any fees. As provided for in the Leahy-Smith America Invents Act (Public Law 112-29) these fees will be adjusted under the fee setting authority provided for in Section 10 of the AIA.  The AIA continues to provide a small entity discount (50%) under 35 U.S. C. § 41(h)(1).

Once the USPTO sets these new fees, it is anticipated that the new fees will include a 50% reduction for small entities and a 75% reduction for micro entities for ‘filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’ Applicants qualifying for a small entity discount (50%) will be those who meet the current definition in 35 U.S. C. 41(h)(1) while applicants qualifying for a micro entity discount (75%) will be those who meet the definition outlined in AIA Section 11(g).”

OK, so the “Micro Entity” discount may not be in effect for a while; when, and if, it does go into effect, how do I know if I am a “Micro Entity”?

Well, it would be nice if we could just simply say that a “Micro Entity” is smaller than a “Small Entity” and  a “Small Entity” is smaller than a “Large Entity”.  However, since this involves the law and lawyers, not to mention the United States Congress, the answer is not that simple.  Suffice it to say that when you file for a U.S. patent application, you should ask your patent attorney whether you qualify for a “Micro Entity” discount or a “Small Entity” Discount.

Why is Richard so successful?  Well firstly he is a brilliant and involved inventor, who provides invaluable input for his patent applications.  Secondly, and perhaps just as importantly, Richard recognizes that for all of his brilliance, he is not a patent attorney.   Over many years, Richard has found my intellectual property expertise to be vital in helping him to succeed.

Some inventors may file their own patent applications without the help of a patent attorney.  Generally, this is a big mistake.  Inventors typically will not be familiar with patent laws, rules, and regulations, which can detrimentally affect their chances of obtaining and enforcing a patent.   Inventors acting on their own, often, will not prepare a patent application in a manner to provide them with the best protection or to give them the best chance of obtaining a patent.

Other inventors may make the mistake of handing an invention description to a patent attorney and asking the patent attorney to “take care of it” without adequate further inventor input.  This is also a big mistake.  Your patent attorney, no matter how good, will probably not completely and immediately understand your invention.  The inventor needs to have continued involvement in the process, so the patent application correctly describes the invention.

The combination of an involved creative inventor, like Richard Belliveau, and a highly qualified, skilled patent attorney, like Walter J. Tencza Jr., Esq. (PATENTNOW.COM®), while not a guarantee of success, is a great recipe in the quest for patents.

One of the biggest misconceptions concerns patent searching.

New inventors seem to think that there is a magic fool proof process for determining, for certain, whether they will be able to obtain a U.S. patent.

There is not.

Patent searches, which may or may not be done prior to filing a patent application, are not fool proof.

There are many reasons why they are not fool proof.

For one, there is way too much information and other items which can impact whether you can get a U.S. patent or not.  This information and other items may include not just millions of U.S. patents, but millions if not billions of U.S. publications, foreign patents, foreign publications, products offered for sale or in public use in the U.S. and potentially other items or information.

If you are old enough to remember, imagine the amount of information in a set of encyclopedias.  Now image literally billions of sets of encyclopedias.   Now imagine you are a patent searcher attempting to sift through and analyze information in billions of sets of encyclopedias.  It is a herculean task.

And with the proliferation of the internet, the amount of information which could impact whether you can get a patent or not, is growing everyday by leaps and bounds.  It is no exaggeration to say you may be looking not for a needle in a haystack, but a speck in billions and billions of haystacks.

When looking at it this way, it is easy to see how someone could spend the rest of their life searching and still not find the speck of information that they are looking for.

This is why, if someone is going to do a patent search, typically they do a “preliminary” patentability search prior to filing.   The preliminary patentability search may “knock out” some inventions, i.e. make an inventor not want to file, and may also help to give a patent attorney a feel for what is in the prior art so that the patent attorney can draft a patent application more narrowly.

However, the U.S. Patent and Trademark Office does not require that a search be done prior to filing a patent application, and in a typical case, the U.S. Patent and Trademark Office will do their own search.

Before you pay a patent attorney or someone else to do a patent search, it wouldn’t hurt to do some searching yourself .  Searching on the internet, such by using GOOGLE® PATENTS and/or the U.S. Patent and Trademark Office Web Site, www.uspto.gov is FREE.   Your search, or anyone else’s, will never be fool proof, but you may be able to determine that your invention has been done, or you may find information which may help your patent attorney draft a patent application.

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Copyright 2011 Law Offices of Walter Tencza, Jr. All Rights Reserved.

Legal Disclaimer- the information provided herein is not legal advice.  Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney / client relationship.  Although effort has been made to ensure that the answers are correct, Law Offices of Walter Tencza Jr. and Patentnow.com® cannot and does not offer any warranty, express or implied that the answers contained are accurate statements of law. This document is provided for informational purposes only.  Viewers must not act upon any information without first seeking advice from a qualified attorney outside the context of this document.

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