Every inventor and start-up company needs to understand what's new in U.S. patent law.
Researchers at Boston College have spent years developing a lithium ion battery that lasts 10 times longer, charges faster and is safer and lighter than those we use today. It could transform how TV remote controls, smartphones and electric vehicles are powered, as well as military equipment and factory machinery around the world.
The team has also spent years and thousands of dollars securing patents on the technology. Many more filings to the U.S. Patent and Trademark Office are planned.
The battery company, called EnerLeap, is like many forming in labs and start-up accelerators in the U.S. Its lifeblood is the strength and utility of its technology. As young companies prepare to manufacture and sell goods, they depend on patents to protect the research and innovation behind them.
Major changes to patent law since 2011 have dramatically altered the process and strategy involved with securing intellectual property. Inventors and start-up companies would be foolish not to understand the implications and consider whether research and development, not distribution, marketing and talent recruitment, is the key to building a viable business.
Here's an explanation of the new law:
In September 2011, to alleviate a years-long backlog of patent applications, the trademark office created a fast track. For $4,000 for a large company and $2,000 for a small one, applicants can ensure their filing will be reviewed within a year of submission.
In March 2013, the trademark office substantially raised fees for re-examination requests and patent reviews, proceedings that companies facing infringement use to attack the validity of patents without going to court. They can also delay litigation, and save the associated costs.
The most significant change is that the patent office no longer awards patents to the first-to-invent but to the first-to-file, putting it in line with patent law in many other countries.
In reaction, David Bailey of the Anaheim, Calif., firm Kauth Pomeroy Peck & Bailey, is hearing from inventors before they even begin work on a new technology. They want to know how much R&D should be complete before filing for a patent, so they can budget their time and financial resources.
Most are then filing a provisional application, says Dave Dorton, a partner at Wood Herron & Evans in Cincinnati. That option allows inventors to disclose the invention and the problem it will solve, serving as a placeholder while the inventor finishes work. A full application must be filed within a year.
In the past, many companies waited until their product was selling to see if it was worth protecting with a patent. Researchers also published articles about the technology in development or the problem being solved prior to seeking protection. Previously, the article served as proof of first-to-invent. No more.
Tonya Drake, a principal at Fish & Richardson's Boston office believes the first-to-file law is forcing inventors to be faster and more strategic in their research, a benefit to start-ups, which are typically more agile than large corporations.
Most are also budgeting intellectual property protection into their initial business plans, she says. That's good and bad. It shows the companies are serious about securing their rights to market their invention, but it might delay investments in faster growth of the business.
A bright spot in the new law is the fast track. So far in 2013, 5,112 patents have been submitted, compared with a total of 5,024 in 2012. Lawyers expect more companies to take advantage of the opportunity to accelerate the process, and in many cases, get their product to market faster.
But drawbacks, Bailey says, are the Patent Office's increased fees for re-examination and review. They're encouraging start-up companies to resort to litigation, which can be more costly and time-consuming to see through. In either case, the expenses associated with challenging an infringement can be debilitating to a young company.
Emily Fannon and Meghan Zipin, the women charged with determining the go-to-market strategy and finding investors for EnerLeap are weighing all these changes as they prepare to spin the company out of the university. They're getting assistance at the MassChallenge accelerator in downtown Boston, and mentees of Drake.
"What keeps me up at night is, are we able to patent the stuff fast enough, and can we protect what we have already patented?" Fannon says. "When you're a start-up, where every dollar is needing to be spent to get your technology closer to market, it would be foolish not to identify (infringement) as a plausible risk."
Laura Baverman is a Raleigh, N.C.-based business journalist covering start-ups and entrepreneurship for regional and national publications. She previously covered entrepreneurship for the Cincinnati Enquirer, a Gannett newspaper. Baverman can be reached via e-mail at firstname.lastname@example.org or follow on Twitter @laurabaverman.