New patent law provisions have implications for inventors

With changes in U.S. patent law, the phrase “file early and often” becomes even better advice for inventors.

Fast-approaching changes to U.S. patent law warrant careful consideration by University of Alabama at Birmingham (UAB) researchers seeking to protect intellectual property.   

uabrf_logoU.S. patent law will change from a “first-to-invent” to a “first-inventor-to-file” system on March 16, 2013, when the America Invents Act (AIA) is implemented.

“While the precise implications of the law will be shaped by future court cases, our main message to UAB inventors is to talk with our staff earlier than in the past, and preferably before they publish or present their work publicly,” said David Winwood, Ph.D., CEO of the UAB Research Foundation (UABRF). “Those researchers close to filing an Intellectual Property Disclosure or IPD with UABRF may want to do so immediately to allow adequate time for review and preparation of a patent application that can be filed before the changes take effect.”

Under the old “first-to-invent” system, a U.S. researcher with proper documentation (e.g. detailed lab notes) could reasonably expect to prevail in a patent race or dispute, even if another applicant had filed for protection first. Also under the old system, researchers who had disclosed details of their work in medical journal publications prior to filing a U.S. application, for instance, generally enjoyed a “grace period” after the disclosure to get an application filed. Under the new laws, that time period may be restricted, or even eliminated.

The new system favors the inventor that files earliest. In theory, researchers who publicly disclose research findings before filing for a patent stand a greater chance of missing the opportunity to protect intellectual property in the United States and abroad. Though a grace period may still exist, its limits and qualities have not yet been tested under the new law.

UAB faculty, students and staff should continue to follow the same procedures in submitting IPD forms found on UABRF’s website as early as possible, so they can be assessed for patentability. A UABRF Q&A on the new patent law provisions is available here.

“We hope to work closely with researchers on a strategy that balances the need to publish results with the competing need to protect their intellectual property,” Winwood said. “Our staff is tracking the new law closely and will work with UAB’s world-class researchers toward the goals of more early patent disclosures and more awarded patents.”