Forbes.com recently interviewed Scott D. Marty, Ph.D., a partner in Ballard Spahr's IP department in Atlanta. The subject of the discussion was the law passed last September by Congress that will substantially alter the patent process, switching the United States from a first-to-invent system to a first-to-file system in an effort to speed the process along.

Dr. Marty stated, "In reality, the Leahy-Smith America Invents Act (AIA), while billed as an extreme reformulation of the U.S. patent process, will likely not revolutionize many of the important decisions inventors and investors have to make... The AIA has established mechanisms to: 1) decrease the fees companies or individuals have to pay, therefore making the U.S. patent system more affordable for some, and 2) by changing to a first-to-file system, the AIA will likely force patent decisions to be made faster, and 3) decisions on whether to seek patent protection will continue unchanged, and lastly 4) AIA has introduced post issuance proceedings in an effort to ensure only 'good' patents survive after the examination procedure is concluded."

When asked how he would advise business leaders considering patents, and what options exist for them, Dr. Marty said, "When faced with a decision on whether to seek patent protection I always try to focus on what the ultimate value of having a patent is. In my experience, many inventors and investors initially fail to recognize that a patent is not an affirmative right to use the invention. An issued patent gives the owner the right to exclude others from using the claimed invention. Put differently, an individual or company may be successful in obtaining a patent on a new widget, but competitors may also have patents that can be used to enforced and prohibit the claimant from making, using or selling his new widget."

Related Practices