Bright ideas: how has the America invents act affected Utah inventors?

• Author: Madison, Rachel
• Position: Technology

In early 2013, about 18 months after President Barack Obama signed it into law, the Leahy-Smith America Invents Act (AIA) took effect. The act included a number of changes that shook up the U.S. Patent and Trademark Office (USPTO), but none were larger than the change from a first-to-invent system to a first-to-file system.

Now some two years later, local Utah inventors are still firing on all cylinders when it comes to filing and receiving patents. Though some minor concerns from the act have emerged, local inventors feel like the change has been for the better.

"The act itself is good because it simplifies the whole process," says Jason Taylor, executive vice president of technology at Draper-based MaritzCX (formerly Allegiance), who has experience filing patents for some of the world's largest tech companies, including Novell and Adobe. "The first-to-invent [system] sounds really good and in principal if we lived in an ideal world that's how we'd want it done, but it's hard to prove who invented something first. That hard to prove [aspect] is where you get into crazy legal fees. The first-to-file [system] has pros and cons, but the pros outweigh the cons."

Taylor says the simplicity, cost and length of time it takes to file and receive a patent are some of the major pros of the ALA ... In the past, with the first-to-invent system, there were frequent problems after an invention got really popular and people would come out of the woodwork to say they had invented that product first.

"You had to fight over who had the idea first and look through notebooks, but now it's first-to-file," says David Hall, president and CEO of Provo-based Novatek Inc., a company that has created, patented and licensed around 700 inventions since 1955. "It has to be your invention, but if someone else had it three weeks before you and put it in their journal, it doesn't matter. If they didn't file it, you still get the patent."

A Simpler Process Hall says one of the best things about the AIA is that it provided a way for inventors to "tie up an idea for one year using an inexpensive online filing that is direct to the [U.S.] patent office."

Because of this, Hall switched the company's entire system over to using the provisional patent process. "We switched to that approach and now file about five provisional [patents] to every formal patent that we do," he says. That way, after a provisional patent is filed, employees have a year to do enough testing to find out...