One of the biggest debates leading up to the passage of the America Invents Act, the patent reform law that was signed by president Obama in October, 2011, was its effect on small businesses. Many worried that the first to file provisions of the new patent act would disadvantage small businesses by forcing them to decide whether to patent earlier and would give larger companies, who are able to file more patent applications quickly, another competitive advantage.
While the America Invents Act has been billed as moving the U.S. patent system to first to file, Derek Dalhgren argues that the new system is in fact a “first to disclose” system. Based on his arguments, I have come to the conclusion that the provisions of America Invents may in fact be in line with the lean startups methodology of Eric Ries.
Dalhgren’s first to disclose argument is based on the grace period provisions of the America Invents Act. A variety of grace periods are provided for inventors who disclose their inventions prior to filing for a patent application. Thus, if inventor A publicly discloses an invention in January 2013, while inventor B, who came up with the same invention independently, files a patent application on the invention in February 2013, so long as inventor A timely files his patent application (within 1 year of the disclosure), the patent application of inventor B will not be prior art to the patent application of inventor A. That is, though inventor B was first to file, inventor A would still get the patent in the absence of any other prior art.
It is not immediately clear what will be considered a disclosure. However, it is likely that a “printed publication” will be considered such a disclosure. A second potential issue is how much or how full of a disclosure will be necessary. It is possible that a non-enabling disclosure (one that does not actually teach how to make the invention) will be sufficient to receive the benefit of the grace period of the disclosure. These questions are not yet settled, but I suspect that as we get closer to implementation, these questions will begin to be answered. The remaining issues are likely to be left up to the courts. Despite these question marks, it is clear that the disclosure concept will be a powerful tool as part of the entrepreneur’s intellectual property strategy.
One of the key concepts of The Lean Startup is the “minimum viable product” (MVP), which is that version of a new product which allows a team to collect the maximum amount of validated learning about customers with the least effort. Thus, the minimum viable product is not necessarily the “minimum product,” but it is the iteration that allows something to be learned about the product. Further, the MVP encourages entrepreneurs to release their product to the market, instead of falling into the trap of feature creep, which can cause delays in bringing the initial product to market. Thus, by creating a well thought out MVP, it is likely that entrepreneurs will be able to creating a strong grace period triggering disclosure that will be useful should the entrepreneur decide to seek patent protection within the year grace period triggered by the disclosure of the MVP.
