Information-NEWS: Patent Law Update; December 31, 2013

 

NEWS FOR RESEARCHERS: MAJOR CHANGES TO
PATENT LAW EFFECTIVE MARCH 16, 2013

The America Invents Act (“AIA”) became fully effective March 16, 2013, bringing major changes to American patent law. Many of these changes will substantially impact the way universities pursue patents. A summary of the major changes most likely to affect you include the following:

  1. CHANGE TO “FIRST TO FILE” RULE

The U.S. will change from the prior “first to invent” rule to a “first to file” rule. While the “first to file” rule has been the norm for most foreign countries, since inception of the patent office, the U.S. had followed the “first to invent” rule. An applicant still must be an inventor, but the first inventor to the patent office will “win.”

  1. GRACE PERIOD SUBSTANTIALLY CURTAILED

Previously, university researchers relied on the provisions of U.S. patent law that allowed a relatively broad one-year grace period for essentially any publication. Now, only the inventor’s own publication (or publications derived from the inventor) will be permissible. Any other publication, anywhere in the world, will destroy patentability. Researchers should note that the term “publication” is very broad, and includes all public disclosures of every nature, whether a publication, poster, presentation, foreign patent application, or offer for sale.

  1. COLLABORATIONS OUTSIDE OF UNIVERSITY REQUIRE WRITTEN AGREEMENT

Without a joint research agreement, publications by collaborators at different institutions are considered prior art (potentially destroying patentability). Not so if an appropriate joint research agreement exists. A joint research agreement must be a written agreement that clearly describes the joint research and the inventions claimed, and researchers should have such written agreements for both funded and unfunded collaborative work. Such an agreement should be reviewed before a patent application is filed, and if needed be updated to ensure all claimed inventions are described.      

  1. PROVISIONAL PATENT APPLICATIONS WILL REQUIRE SUBSTANTIALLY MORE DETAIL

Previously, U.S. patent law permitted the filing of so-called “cover page provisional applications,” which could essentially be the text of journal manuscripts with cover pages added.  Under the new law, provisional applications must contain a complete disclosure of the entire invention.

  1. CHALLENGES TO PATENT APPLICATIONS WILL BE MUCH EASIER

The new patent law introduces several new ways for challenging both pending and granted patents.


WHAT DOES THIS MEAN TO YOU?

Not everyone is in agreement about what the AIA will mean to universities and inventors. How the changes to the scope of the one-year grace period will affect publications is not yet clear. Some labs are advising researchers to publish as soon as possible in an attempt to cut off others’ patent claims. Some are suggesting holding publications and filing patent applications as soon as possible. What to do might vary, depending on the nature of the research, the level of completion, and future use or development plans. 

However, some best practice suggestions are clear: 

  1. DO disclose inventions early. It is clear that even provisional patent applications must be detailed, so if you have a publication pending, be sure to give the University’s Office of Intellectual Property Development ample time to consider your disclosure. Both provisional applications and utility applications are apt to cost more, so more careful thought will have to be given to all types of filings.    
  2. DO ensure you have written joint research agreements, and that the University’s Office of Intellectual Property Development is made aware of both external collaborators and joint research agreements.
  3. DO carefully use Confidential Disclosure Agreements before discussing your research or research results with anyone outside the university.
  4. DO ensure that everyone in the lab is aware of the need for a written agreement before sharing research plans or results outside of the university.

For more information see:

Questions? Contact:

Don Keach, Intellectual Property Development Office
Contact for information on unfunded research collaborations
859.218.6556
dkeach@uky.edu

Katherine Adams, Office of Legal Counsel
859.257.2936
kadams@email.uky.edu

David Erem, Office of Sponsored Projects Administration
Contact for funded collaborative agreements
859 257-8311
dlerem2@uky.edu