Memo To U.S. Inventors: File Early

FOR BASEMENT TINKERERS and corporate researchers alike, the New Year has brought new competition: From now on, overseas inventors will get equal treatment from the U.S. Patent & Trademark Office, ending decades of favoritism. The change was mandated by the General Agreement on Tariffs & Trade and took effect on Jan. 1.

Before that, American patent law stipulated that any research efforts undertaken outside the U.S. could not be used to prove when an invention was conceived. So if an American could document that work on some idea had begun before the date that a foreign researcher applied for a U.S. patent on the same concept, then the American would win--even if the offshore work had started first. (In other countries, there would be no dispute: Patents go to the first party to file, not the first to invent.) For the same reason, overseas inventors never bother to challenge U.S. patents that infringe on their prior work.

The new ground rules mean that research laboratories must be extra diligent in documenting their activities, cautions Jerry D. Voight, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, a patent-law firm in Washington. The ownership of many patents that earned millions, he notes, was ultimately decided in the courtroom.

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