United States patent law is undergoing a major overhaul, and Penn’s Center for Technology Transfer, which helps University members commercialize inventions, file for patent protection, and incubate spin-off businesses, is preparing for the changes.
The new legal framework stems from the America Invents Act, which was passed in the fall of 2011. Many of the Act’s provisions have already taken effect, but the one that is perhaps most relevant for Penn will kick in later this month. On March 16, the United States will switch from a “first-to-invent” to a “first-to-file” policy, falling in line with patent systems already in use in most of the world.
The main difference between the two policies is that in a “first-to-invent” system, patents were granted based on when an invention was conceived, not when a patent was filed. Under the new system, the person who files first gets the patent, regardless of whether he or she was the first one to conceive of the idea.
Another notable change that will impact researchers is a weakening of the “grace period.” Under existing U.S. patent law, inventors had a full year from the date of their public disclosure to file for a patent. During a lawsuit, they could prove they had arrived at the idea before anyone else, using their private lab notebooks or other dated material.
“In ‘first-to-file’ systems without a grace period, if you make a public disclosure of an invention before a patent was filed, you are out of luck,” says John Swartley, executive director of the CTT. “That disclosure puts it in the public domain, so no one can file a patent on it.”
Despite the fact that the new patent system in the United States retains a modified form of the one-year grace period, universities and researchers that fail to file prior to the first public disclosure of promising results may still lose patent rights because of the changes to the law.
“We can’t rely exclusively on this grace period anymore, so any patents filed after public disclosure are now at risk,” Swartley says.
On March 16, the United States will switch from a “first-to-invent” to a “first-to-file” policy, falling in line with patent systems already in use in most of the world.
These disclosures typically take the form of the publication of an article in a scholarly journal, but any public dissemination of the ideas behind the invention can potentially hurt its ability to be patented at a later date. This includes public talks and lectures, abstracts submitted to scientific conferences, grant applications, and potentially even thesis defenses—everyday occurrences at a major research university like Penn.
“And as a university, almost all of our [intellectual property] is extremely early stage and spread across the gamut of scientific fields, so we often don’t know whether it’s ever going to be scientifically viable, much less commercially successful,” says Jennifer Langenberger, director of intellectual property at the CTT. “Switching to ‘first-to-file’ recommends an earlier and more aggressive patent-filing strategy than [we’ve previously taken].”
CTT is therefore urging Penn inventors to exercise additional caution with their ideas, and to bring potentially patentable ideas to the CTT’s technology licensing officers before sharing them outside of the University.
“We form personal relationships with faculty members,” Swartley says. “The initial disclosure starts that process, but it’s understood that it will be an iterative, back-and-forth dialogue that helps us refine what the invention is and what the patent should include to make sure we all benefit from it moving forward.”