Tuesday, January 3, 2012

Will Disclosure Docs Help Under First-to-File?

Dear Rich: Once the change is made to “First Inventor to File” under the America Invents Act, will the USPTO still accept filings of invention disclosure documents, as these would still be relevant and useful in derivation proceedings? Hey, welcome back everybody. It's 2012 and we're starting our fifth year of helping creative types answer pressing intellectual property questions. Sure, we never get selected for any "Best of" blog lists, and our Google Analytics are embarrassing, but hey, that's what happens when you're down in the trenches answering questions about Disney princess costumes, Miami Heat logos, and the copyrightability of reuben sandwich recipes. We're not sure how many zillions in dollars we've saved our readers in legal fees (or if we've actually saved anybody any money). But the important thing is that we think we're doing something worthwhile and so we continue on, paving a course that's punctuated by moments of unobscured clarity and unsuspected profundity. Did we say, "Welcome Back?"
Right, you had a question. Yes, disclosure documents might be helpful in the soon-to-come "derivation hearings" -- a process whereby the true creator of an invention is determined. However, if you are referring to the government's official Disclosure Document Program, that's been discontinued and so would not be available when first-to-file (and derivation hearings) kicks in on March 16, 2013. Patent it Yourself author David Pressman agrees with you that a record of conception and testing will be vital in a derivation proceeding, but in the absence of disclosure document filings, inventors will have to keep their own records. By the way, we've posted a series of articles on invention ownership issues at our Patents and Business site.