Academic journal article Journal of Law and Education

Chalk TalksThe AIA and TTOS: How Technology Transfer Offices Can Best Handle the Changes in Patent Law Brought about by the America Invents Act

Academic journal article Journal of Law and Education

Chalk TalksThe AIA and TTOS: How Technology Transfer Offices Can Best Handle the Changes in Patent Law Brought about by the America Invents Act

Article excerpt

I. INTRODUCTION

The "America Invents Act" ("AIA") was signed into law by President Obama on September 16, 201 1 .' The passage of the AIA marks the culmination of years-long attempts at patent reform. The AIA introduces many changes to the U.S. patent system, and many of those changes will have an impact on the operations and planning of technology transfer offices ("TTOs") at research universities.

The function of a TTO is to oversee the licensing and protection of all university-created intellectual property. A TTO also handles the licensing and use of technology owned by third parties. TTOs will also routinely handle the education of all university faculty and staff on the university's intellectual property policies in addition to its licensing and protection functions.2

Prior to the passage of the AIA, the last major change to the U.S. patent system was in 1952.3 The AIA was passed in the hope of modernizing the patent system to make it more efficient and to harmonize it with every other patent system in the world.4 Many of these changes will not take effect for another year, but it is important for TTOs to be prepared to handle the changes to procedure and prior art that will become effective on September 16, 2012 and March 16, 2013 respectively.5

Not every portion of the AIA will have a direct impact on the daily activities or strategies of TTOs, but some of the changes in the AIA are worth special consideration. A thorough analysis of the changes and their general significance is outside the scope of this note, and has already been done elsewhere;6 instead this note focuses on several provisions of the AIA that will impact the policies and strategies of TTOs.

The changes introduced by the AIA that will have the greatest influence on TTO operations are the change from a first-to-invent to a firstto-file system in the U.S.;7 changes in what will be considered prior art;8 changes in the fee structure;9 change to the best mode requirement,10 and the addition of a new reexamination and post-grant review proceedings policy." Many other changes were introduced by the AIA, but those listed here will have the greatest impacts on TTO operations.

These changes should prompt TTOs to consider making two important changes to the way they administer their intellectual property policies and procedures. First, TTOs will need to train their staff and university researchers on the forthcoming changes in the way that prior art will be treated. The changes in the treatment of prior art will affect the way all university disclosures and publications are made. Second, TTO staff will need to adopt the policy of filing early provisional applications for any university research disclosures. Other changes in policies and strategies may be required to fully comply with the AIA, but implementing these two strategies can be a starting place for compliance with the changed law and will help the TTO to achieve the greatest possible return on research investment.

II. THE CHANGES

A. First Inventor to File

The most talked about and probably the most important change introduced by the AIA is the switch from a first-to-invent to a first-to-file system in the U.S.12 The U.S. will be the last country to have made the switch, and the change will bring the U.S. patent system closer in line with the patent systems of the rest of the world.13 Prior to the AIA, the first inventor to create an invention was entitled to the patent. Under the AIA, the first inventor to file her application with the patent office is entitled to the patent, so long as no prior art existed that disclosed that invention.14 The new first-to-invent system does away with the traditional priority issues and removes interference proceedings, replacing them with derivation proceedings, and changes what will be considered prior art for statutory purposes under 35 U.S.C. 102 and 103.15

While the change to a first-to-file system has received the most fanfare, the changes made in what will be considered prior art will have the greatest impact on policy and strategy changes for TTOs. …

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