A Look at the “First to File” Change to Patents in the US

On March 16th of this year (last Saturday) there was a major change to how you claim rights to an idea in the US, and it came and went without much fanfare.  That is when the US changed from a “first-to-invent” system for deciding who gets to rights to an idea to a “first-to-file” system.  It snuck up on me as well. I remember when the “America Invents Act” was passed and signed in 2011, and I remember thinking “I should remember this”  but it got here and I forgot.  So I did a little research to make sure I understood what was going on and I have shared what I found here.

I recommend you start with the Wired.com article that started me on my search, it is a good overview. After googleing around for a while I found that most of the on-line information was the same, they were just rephrasing the USPTO press releases.  This is my summary:

  • This is a big shift. Instead of documenting when you came up with an idea in a note book on some other type of system, you now just have to file your idea first. This is the more common practice around the world.
  • They passed this law to avoid all of the cost of litigating when you are trying to prove who came up with an idea first.  Now it does not matter, it is whoever gets their paperwork submitted first. 
  • The definition of prior art is also changed, meaning that if you disclose your invention to the public anywhere in the world, you have stuck your claim in the ground and you have 12 months to file a patent before anyone else can. You basically get a one-year head start if you just share your ideas with the public and can document it.
  • But if you use this exception you give up some rights in other countries.
  • If someone is using an idea but did not patent it, and someone else develops the same idea independently, then the first person can still use the idea even if a patent is issued to the second person.  This is prior use and it comes in to play often with trade secrets. You use your trade secret to make a product, then someone else independently develops the same idea and gets a patent, they can not sue you. You have to right to keep using it if you can prove commercial use.
  • A confidential sale of a product containing patented technology no longer starts the 1 year period to file a patent.
  • The cost of getting a patent has changed, mostly going up.
  • How you appeal things has changed. Honestly, I do not understand the current process well enough to get a feel for the new process.

This should get your started with a basic foundation so you can go to the US Patent and Trademark Office site and really dig in to the actual details:

www.uspto.gov/aia_implementation/index.jsp

Unfortunately the law itself is not a new law, but it edits the current laws so I found it very hard to follow.  The Wikipedia page is a bit easier to follow and seems to cover most things, even some of the more obscure aspects of the law.  The National Law Review also provides a pretty good summary

What Does this Mean to Me, My Company, My Startup?

It means a lot.  The days of jotting an idea in a book and getting it notarized are now a thing of the past. Whoever is in charge of your intellectual property policies and processes should have already made changes in your organization (I missed that boat by a bit). Here are some thoughts:

  • You still need to keep good track of ideas and when you had them. You still need to prove that you really invented the thing and you did not steal it.
  • You should also link those ideas to when they were first used commercially. Tracking prior use of trade secrets is now very important when avoiding a patent infringement case.
  • Look at filing patents or at least provisional patents much sooner.  This means:
  • You need to budget a lot more for IP protection
  • Or, you need to decide early on that an idea is not worth protecting, you can no longer wait to act because you have the invention event documented.
  • How US patent law relates to foreign patent law has changed. And when foreign countries recognize a US patent has changed. If this impacts you, then get an understanding of it.
  • As always with anything legal, you need to get hold of your lawyer and discuss this with them.  As everyone goes down this path things will change, especially as everyone starts litigating. But in the long run, this should reduce litigation and make things simpler.  Just be aware of the change and adapt to it.

    Orthosensor on TV

    We always love to see PADT customers get mentioned in the media, so we were very happy to see that Orthosensor’s Knee Balancer making the news:

    Orthosensor-Fox-Video

     

    Although they do not get a shout out by name, we know that device very well because we have worked on it with Orthosensor and their Arizona team is actually located within PADT’s Tempe facility.  You can learn more about this device by visiting here.

    We hope to see more of this product as its use spreads.

    We expect to see even more of this product as more and more doctors start adopting it in their pr

    Automated Intellectual Property Protection with Traklight

    traklight-logoEvery innovator faces the same problem: how do I make sure that I have protection for my Intellectual Property (IP).  Back “in the day” when I started in this world we wrote everything down in a numbered lab book and that was the record.  But these days we just never write anything down, it is all electronic.  Spending hours printing and pasting into a notebook just does not work.

    Traklight-flow

    Enter Traklight.  This is a portal for people with IP that needs to be protected, from at-home inventors to full sized companies.  We met the people behind the site through some mutual friends and had a sit down with them to understand what they were offering.  We were so impressed we thought it was definitely worth sharing.

    ID your IP

    There first offering is a wizard that… well I could write something or just quote their site:

    If you don’t know what Intellectual Property you possess, our ID Your IP questionnaire walks you through interactive questions and provides a Potential Intellectual Property report. If you want to identify your risk of losing your IP, take our IP Risk Quiz.

     IP Vault

    For an established company like PADT, we really like their IP Vault. This is a resource for organizing all your files with time stamps that help prove what you came up with, when you came up with it.  Not only does it organize and stamp your IP, it also stores it securely in the cloud so you do not have to worry about loosing it, or even if you do backups, you do not have to worry about moving it if you or your computer moves.  Very useful.

    IP Cloud

    As  a leader in modern IP protection, the folks at TrakLight.com have also stepped up and created a resource for people creating IP called IP-Cloud. There are some great links here, everything from lawyers to marketing companies to software developers.  PADT is even listed.

    Learn More

    The best way to learn about TrakLight.com is to visit their website at… you guessed it: http://www.traklight.com.

    You can also watch their cool video:

    Seven Case Studies on Product and Medical Device Development

    This morning we added the seventh case study highlighting some customer stories to PADT’s new website.  These short documents highlight a project that our product and medical device development teams worked on with a variety of customers, from Nissan to a medical device inventor. 

    You can view them under the Successes portion of our website, or browse the list below:

    Clearview Diagnostic TechnologyTHE WORLD’S FIRST AND ONLY FDA APPROVED TOTAL ARTIFICIAL HEART

    SynCardia has chosen to work with PADT based on their ability to develop close personal relationships, to create and implement engineering solutions rapidly, and to support SynCardia’s innovative drive for our life-saving technology” — Douglas A Nutter, COO, SynCardia Systems, Inc.

    SynCardia turned to PADT Medical to carry out a comprehensive series of product verification testing within a very challenging timeframe.  Continuous and successful collaboration between PADT and SynCardia professionals guaranteed the program’s success.

    READ FULL STORY

    Clearview Diagnostic TechnologyCLEARVIEW: A NOVEL MEDICAL MEASUREMENT DEVICE

    “For the last 2 years we have worked with PADT to develop our ClearView technology. Their team has helped us with many aspects of product development and commercialization. They have been a very valuable asset and I would highly recommend them to any startup that needs to navigate the pathway to market.”— Tom Blondi, President, EPIC Research & Diagnostics

    From 2010 – 2012, PADT worked with EPIC to help them develop their ClearView diagnostic technology. PADT provided engineering, quality, manufacturing, and regulatory support. During this period, EPIC was able to raise over $6 million in private investment, achieve 510(k) submission, conduct a clinical trial at a Johns Hopkins affiliate with devices delivered by PADT, and transfer the product to manufacturing with a local contract manufacturer.

    READ FULL STORY

    High Pressure Hydrogen Pump A COMPACT HIGH PRESSURE HYDROGEN PUMP

    PADT has demonstrated strong concept creation and development testing abilities – and have done so with very short time schedules. PADT was in charge of a key component development for our Fuel Cell System, and accomplished it as planned. Owing to PADT’s challenging spirit, Nissan was able to lease the 2005 model FCV’s to some customers in the early period of 2006. In addition, Nissan has been able to continue the FCV leasing program for five years with PADT’s reliable support.— Arai Takayuki, Senior Manager, EV Systems Laboratory, Nissan Motor Company

    PADT worked with Nissan for 4 years to develop a high pressure, high performance hydrogen pump. We have now delivered over 200 working systems and have supported fielded vehicles since 2006.

    READ FULL STORY

    Germicical Light for Tracheal TubeGERMICIDAL LIGHT FOR ENDOTRACHEAL AND TRACHEOSTOMY TUBES

    The PADT experience was a positive one from my first phone conversation with them to the delivery of the end product. The engineers delivered a prototype that was exactly what I envisioned in a short 8 weeks. PADT will be my choice in the future.” — Bob Rife, R.R.T.

    In 8 short weeks PADT Medical transformed a recently patented invention into a functional prototype. This novel Endotracheal Tube includes a germicidal light to reduce the risk of pneumonia in patients requiring prolonged airway intubation. This device is a good example of PADT’s ability to quickly convert an inventors ideas into a working, functional prototype.

    READ FULL STORY

    Portable Fuel Cell Power SupplyPORTABLE FUEL CELL POWER SUPPLY

    PADT worked with PolyFuel for 18 months to develop a fuel cell based, laptop power supply that was powered from a methanol fuel stock. We started with a blank sheet and developed a POC system that included the fuel cell stack, all of the custom components and controls, and was hybridized with a Lithium-ion battery pack. During that period Polyfuel was able to raise Venture Capital to develop their product.

    READ FULL STORY

    Portable Fuel Cell Power SupplyCLINICAL SPECIMEN COLLECTION SYSTEM

    The ReadyFreezer will rapidly freeze biospecimens collected from any tissue, using any surgical retrieval device, and in any hospital or clinical setting to preserve key biomarkers.  This project took full advantage of PADT’s internal simulation and analysis capabilities as well as our in-house rapid prototyping services.

    READ FULL STORY

    Endoscopic Obesity Treatment ToolAN ENDOSCOPIC TOOL FOR THE TREATMENT OF OBESITY

    For the last 3 years I have worked with PADT Medical as a physician-inventor of medical devices. Their engineering team is professional, punctual, and responsible. Their management is exemplary. I recommend PADT Medical to any potential Client.— Charles J. Filipi M.D., Medical Director, SafeStitch Medical, Inc.

    In 2006, PADT was approached by a physician who had developed intellectual property that centered on endoscopic treatments for obesity and was founding a new company called SafeStich Medical. PADT served as SafeStitch’ engineering team for several years, developed a suite of related products, helped them achieve 510-k status on their first product, and supported their effort to build a permanent engineering organization. In June of 2010, SafeStitch raised $5 Million of capital to help commercialize their technologies.

    READ FULL STORY

    If you are interested in learning more about our Product Development team or PADT Medical, contact us and we will be more than happy to discuss your needs.

    Writeup on PADT Customer Ulthera in BizJournal

    We just noticed a nice write-up in the Phoenix Business Journal on one of PADT Medical’s customers: Ulthera.

    We are pleased to see them get the recognition they deserve for the success they have worked so hard to obtain.

    Getting to Know PADT Medical: An Interview with Skott Skeleton

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    PADT Medical has been an established group within Phoenix Analysis & Design Technologies (PADT) for a while now. Over the years it has grown and we have added new employees with new skills and experience. But one “employee” has been a member of the team since the beginning, providing guidance and setting a strong example on a variety of medical device product development projects. Skott Skeleton may not be physically substantial, but his skills are rock solid. If you have been fortunate enough to have toured PADT, you have probably met Skott as he hangs around in the PADT Medical office area.

    As we launch this new blog based format for sharing information and news with people interested in what is going on with PADT Medical, we thought it would be a good opportunity to sit down and ask Skott a few questions and learn more.

    EM: Skott, why don’t you share with our readers why you decided to join PADT Medical?

    SS: I didn’t decide anything. One day I was hanging around with my buddies in a warehouse in China, and someone comes along, shoves me in a box and ships me off to the desert. But once I got here, I really fell in love with the place. PADT is a great company. Everyone here is smart, they have good senses of humor, and they do not judge me because of my body type.

    EM: What is your roll within PADT Medical?

    SK: Mostly I just watch. I move around in the office and I watch. Everyone knows that I’m there and that I am watching. Another important role that I play is to remind everyone why they are doing what they are doing what they are doing. For many engineers, parts are parts. But PADT Medical works on parts that are used to heal and repair people. There is nothing like a person stripped down to the basics to remind everyone that we are working on devices that can really make a difference in people’s lives. And, if we do it right, a good difference.

    EM: PADT has been doing product development for over 15 years, including many Medical Devices, why create a special group and brand it apart from PADT?

    SS: After doing a couple of medical projects two things become clear. First, the development process for medical devices is different because of the quality requirements, the material issues, the regulatory environment, and the difficulties in designing things that go inside of or interact with human bodies. Second, medical device customers know that they need specialists. PADT Medical customers know that generalists might be able to do some things very well, but that engineers in this space really need to know what is required for medical devices. So we formed a group dedicated to nothing but medical device product development. And to convey that specialization and focus to people inside and outside of the company, we created the PADT Medical brand.

    EM: There are a lot of people out there doing medical device product development, what sets PADT Medical apart?

    SS: I’d say their engineering skills and their ability to simply get stuff done. When I’m standing in the corner and no one remembers I’m there, I hear customers talk. The main thing they say over and over again is how impressed they are with the breadth and depth of engineering knowledge within PADT Medical. The other thing they say is that when the PADT Medical team signs on to a task, they get it done. They get it done efficiently and with a minimal amount of delay and floundering, especially with difficult tasks.

    I also think there are a few other things that set PADT apart but I could go on and on about it, or you can read the PADT Medical part of the website. Let me list the most important bits:

    • Access to world class FEA and CFD simulation, right here at PADT
    • In house rapid prototyping, injection molding, and machining
    • A flexible and robust product development process
    • Established and proven processes

    That is just the tip of the iceberg.

    EM: That is very impressive. PADT Medical really seems to have a lot of unique skills, experience and tools. But no group can do everything themselves, what do you do when you can’t do what you need in house?

    SS: Ah yes, our vendors. We love our vendors. We have over 350 vendors and 65 are approved for medical device work. You are exactly right when you say that we can’t do everything ourselves. So we have spent a lot of time finding and qualifying lots of different vendors. We use our quality system to make sure they can deliver what our customers need, exactly the way they need it. Then we continually work with them to make things better and more affordable.

    I should also add that not the way a lot of companies do it this way. We don’t have a purchasing department that beats up our vendors on price and schedule. Our engineers and technicians work directly with our vendor network as partners to come up with a reasonable win-win-win solution for everyone. We want our customers to win, we want PADT to win, and we want our vendors to win.

    EM: I’ve heard that PADT Medical is well known as a team that works very closely with vendors and customers. How close?

    SS: So close that sometimes I get wheeled out of my comfortable corner to make room for our customers and vendors to actually move into our space here. Only a few partners end up collocating, but even if they are visiting for a day or a few weeks, we make room, and we work side by side till the project is complete.

    EM: Skott, we are running out of time and you probably need to get back to the PADT Medical room. But before you go, is there anything else you would like to share with our readers about PADT Medical?

    SS: Wow. That is a tough one. There are so many things that we do here, so many success stories. So many difficult challenges that we have identified and overcome.

    When I think about it, I guess the only thing I can say is that if anyone out there is thinking of using PADT Medical for their medical device development project, you should meet with us to really understand all we have to offer. Some of it can be put down on paper or explained in a PowerPoint, but much of the value that PADT Medical adds is intangible. Things like experience, problem solving, perceptiveness, mechanical intuitiveness, and organizational skills. If you want to learn more, let us do a proposal for you, or better yet, let us work on a small project where we can show you first hand.

    EM: Well thank you very much Skott. It has been a bit creepy talking with you, but it has been informative. I hope we can do this again soon.

    SS: Anytime. I am looking forward to the new blog. I hope to meet some of the readers when they come in for a tour.

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    [Editors Note: Yes, we know this is a silly way to do an article about what sets PADT Medical apart, but let’s be honest – if I had written an interview with one of the mangers here you would not read it. This way we can have some fun and you might learn a thing or two about what sets PADT Medical apart.  Or you will at least get to roll your eyes a few times.  Share your thoughts in the comments below. – EM]

    PADT Medical Receives Support Award from AZBio, and Provides Awards to Others

    On October 23rd, 2012 PADT was honored to receive an award at the AZBio Awards event in recognition for our support of Innovation in the Arizona Bio-Technology community.  It is a very cool little guy and is very happy on our awards shelf:

    AZBio-15Years-Award-2012

    In addition, we were very honored to be asked to manufacture many of the awards that were handed out.  The distinctive double-double-helix design was a big hit again this year, and it was a real honor to know that so many companies, educators, and individuals will have something PADT made in our Rapid Prototyping group on their shelf.

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