Considerable changes were made to US patent law — America Invents Act (AIA) – on March 16, 2013, looking to benefit big businesses rather than small businesses. Our new regulations will also alter how researchers and universities apply for patents. Major changes include:
- “First-to-File” Rule: Before March 16, US patent law abided by the “first-to-invent” rule; however, now it adheres to a “first-to-file” rule. The “first-to-file” rule has largely been the model for the rest of the world, yet the US chose to not follow it. Now the first inventor to the patent office will be granted the patent.
- Grace Period: The grace period for publications has been significantly shortened. It used to be that university researchers could use the provisions of US patent law to their advantage, since it permitted a fairly generous one-year grace period for almost all publications. New US patent law states that only the inventor’s own publication will now be accepted. The existence of any other publication — which includes a publication, poster, presentation, foreign patent application or offer for sale — will extinguish patentability.
- Written Agreements: University researchers must obtain a written research agreement when collaborating with researchers from different institutions. If there is no agreement, any publications co-authored by multiple institutions will be seen as prior art, and could also destroy patentability. However, if a join research agreement is written and signed by all parties, then patentability will remain intact. A joint research agreement should outline the joint research and declared inventions, and should have written agreements for both unfunded and funded shared work. All agreements will be studied prior to filing a patent application.
- Provisional Patent Application: Per revised legislation, provisional applications must include an entire documentation of the invention. Before, US patent law allowed inventors to file “cover page provisional applications,” meaning applicants could submit text from journal manuscripts with cover pages.
- Challenging Patent Applications: Revised patent law provides a handful of new way to dispute pending and granted patents.
Only time will tell how revised patent law will affect small technology-based entrepreneurial businesses, which are the main engine of America’s economic growth and competitive standing in Tom Friedman’s Flat World.
Inventors Race to File Patents
Developed and Written by Dr. Subodh Das and Tara Mahadevan
April 19, 2013
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