March 16, 2013: End of an Era

March 16, 2013: End of an Era

Apr 01, 2013

Since President Obama signed the America Invents Act (AIA) in September 2011, people with even a passing interest or remote connection to the patent system have had March 16, 2013 circled on their calendar.  The United States Patent System has been turned on its head, with some proclaiming victory. Common sentiments are that the law brings U.S. patent law in line with the rest of the world and that it will help to protect inventors while simultaneously fostering innovation.  I, however, feel that AIA will mostly help large, multinational corporations and will likely make my job as a University Technology Licensing Manager more difficult. 

There are a number of changes that have occurred as a result of the AIA, with most having already been phased in over the last 18 months. The most drastic change, however, is the just-enacted shift from “first to invent” to “first to file.”  In the past, the hallmark of US patent law was, with certain expectations, that so long as you could prove through sufficient documentation that you were the first to invent something, you could be granted a patent even if you were not the first to file for patent protection.  Now, there is a race to the patent office doorsteps.   No longer is the date of invention important – the important date now is the effective filing date.  

What does this mean?  The general consensus is that there is no more stealth mode.  Patent strategists will shift to filing early and often rather than risk being scooped by someone else.  Filing early and often may be an employable strategy in private industry, but it is just not realistic in a University environment. 

First, we have a limited patent budget and deciding what technologies to file on at such an early stage in their commercial development will become increasingly difficult.  Second, our faculty’s responsibilities as researchers and educators must always be balanced – this includes the need to publish their research findings.  While it is always possible to publish and patent, the new requirement to essentially patent before publishing will create new conundrums for Universities moving forward. 

There are a number of other changes that will occur under the new law (more blog posts to come) and the full transition may take years to fully resolve as it is unclear how the USPTO and the Federal courts will interpret and apply the AIA.  Now, more than ever, those involved in the patent process will need to diligently follow future developments and adapt our strategies to survive and excel in the new landscape.  

If you have questions about AIA or comments, please contact me at tristan.carrier@unh.edu.

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