Issue link: http://www.insightdigital.biz/i/96377
insight on B u siness Services By Karla Wot r uba Claiming an idea America Invents Act will change how intellectual property is managed W hen Maung Win was a research and development manager for Kimberly-Clark Corporation in the 1980s, his work for the company obtained several patents. It was an arduous process, sometimes taking several years. With the implementation of the LeahySmith America Invents Act of 2011, the process will change, but the effects on business have yet to be worked out. "The America Invents Act is probably the most comprehensive reform to U.S. patent laws since the '50s," says Brian Gilpin, a registered patent attorney and chairman of Godfrey & Kahn's Intellectual Property Practice Group. Gilpin works in Milwaukee but has clients in Green Bay, Appleton and Plymouth. Patents protect intellectual property by excluding others from using the invention for a defined amount of time in exchange for public disclosure. Intellectual property can mean a physical invention, or it can include a process or design. The America Invents Act has been implemented in phases. The first phase, at signing, brought increased fees and litigation reforms. The second phase went into effect on Sept. 16 and involved "primarily some tweaks to the proceedings that you can undertake in the patent office to have an issued patent reexamined, or a third party to submit prior art to the examiner in the course of the examination," says Gilpin. "Prior art" is a term used to describe w w w. i n s i g h t o n b u s i n e s s . c o m "The America Invents Act is probably the most comprehensive reform to U.S. Patent laws since the '50s." –Brian Gilpin, registered patent attorney and chairman of Godfrey & Kahn's Intellec tual Proper t y Prac tice Group documentation that would challenge a patent application. The biggest change is yet to come in March 2013, when the patent office moves from a first-to-invent to a firstto-file system. Currently, the United States is one of just a few countries in the world that issues patents under first-to-invent. In this system, which is how Win filed patent applications, documenting the timing of an idea [continued] » D e c e m b e r 2 012 • Insight | 27