Innovation Asset Blog

Accounting for new patent law provisions in IP strategy

With additional provisions of the America Invents Act set to debut in 2012, companies should already be preparing to adjust their intellectual property strategies accordingly.

According to U.S. Patent and Trademark Office Board of Appeals and Patent Interferences representative Janelle Waack, several new variables may factor into patent strategy equations in the coming months.

"For example, after September 16, 2012, third parties can submit prior art in the prosecution of another party's patent application with an explanation of why the prior art is relevant to the claimed invention," Waack wrote in a guest column for Inside Counsel.

Waack also advised companies to utilize the expedited processing track to protect their most valuable intellectual assets, noting that the USPTO's backlog can yield application timetables spanning several years under traditional methods.

It is never too early to start looking toward the revised first-to-file provisions that go into effect in March 2013. According to, it will be important for firms to eliminate internal administrative roadblocks and ensure they are first to file applications for their most prized inventions. Adequate detail should also be included in the original application so that future claims to related features are successful.

Peter Ackerman

Peter Ackerman

Founder & CEO, Innovation Asset Group, Inc.