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Originally published Sunday, February 23, 2014 at 8:01 PM

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Year-old patent laws squeezing small companies

On March 16, the first inventor-to-file provision of the Leahy-Smith America Invents Act went into effect. The changes are the most significant to the system since 1952, as they harmonized the U.S. patent system with the rest of the world.

The News & Observer (Raleigh, N.C.)

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Next month marks the one-year anniversary of the shift in the U.S. intellectual-property landscape, and business owners and organizations said the changes are squeezing new and small enterprises.

On March 16, the first inventor-to-file provision of the Leahy-Smith America Invents Act went into effect. The changes are the most significant to the system since 1952.

The most significant change centered on awarding patents to the first person to file an application. The previous system, meanwhile, put priority on the person who could show he or she invented a concept first.

“Small-business owners and inventors are really feeling the need to file earlier in the process,” said Kimberly Mayer, statewide director of technology development and commercialization for the N.C. Small Business & Technology Development Center in Raleigh. “They really want to make sure that they are protecting their rights.”

But small companies often need capital or an investment to fund what can turn into an expensive application process.

The changes have turned getting a patent “into a money game instead of an invention game,” said Robbie Troxler, director of advanced technologies for Troxler Electronic Laboratories. The company in Research Triangle Park, N.C., which has about 100 employees, develops and manufactures quality control and measurement equipment for the highway and construction industry.

Under the old system, Troxler had a 12-month grace period that followed a public disclosure of an invention before filing an application for protection. Troxler used that time to test and refine his invention, he said.

“I am a little guy that can’t just throw money at something,” he said.

Troxler said the patent application process ranges from $6,000 to $10,000, including attorney and other fees.

Mayer’s group, which doesn’t offer legal advice, works with clients to help them identify resources to start building a solid, defendable patent claim, Mayer said.

Mayer recommends that inventors on a tight budget familiarize themselves with patent terms and the process before hiring an attorney.

She also advised inventors to do a preliminary patent search on the U.S. Patent and Trademark Office’s website or on Google Patent, which searches more than 7 million U.S. patents.

“They can at least get an idea of what the landscape looks like, and whether there is a product that sounds similar that they can call it to the attention of the patent attorney,” Mayer said.

The America Invents Act requires the U.S. Patent and Trademark Office to work with law associations to establish pro bono programs that assist small businesses and complete studies to evaluate how the changes affected small businesses.

“The people that are most hurt are the ones that are really (barely) able to afford any sort of patent,” said Chapel Hill, N.C., patent attorney Kevin Flynn.

Their only choice may be to put together a provisional application without the assistance of an attorney, he said.

They might think they have protection but learn months down the road that their submitted information didn’t have enough substance to merit a defendable claim, Flynn and others said.

Inventors also need to include the best mode to make and use the invention, plus suboptimal and other modes to preclude others from having a nearly identical product.

“You really need to try to make it as broad as possible” when putting together a patent application, he said.

But don’t go too far and suggest you know how to do things that you don’t, as the application could be used against you in the future.

“It’s a difficult game,” Flynn said.

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