Day: April 26, 2013

New Leahy-Smith America Invents Act (AIA) Patent Law Affecting Research Commercialization

The Leahy-Smith America Invents Act ( AIA), also known as the Patent Reform Act of 2011, went into effect on March 16, bringing with it significant changes to the US Patent system.  The most important change from the AIA law moves the United States to a first-to-file system from the previous first-to-invent system.  Whereas the old system provided inventors with a mechanism to prove they were the first to invent and secure patent protection, the new system is essentially a race to the patent office.  If two independent researchers came up with the same invention at the same time, the first one to file a patent application will be awarded the patent.  In the past you could rely on dated lab notebooks and notes to prove you were the first one to invent.

The old system also provided a one-year grace period to file a US patent from the time the invention was publicly disclosed. Until the new patent laws are clarified through future court case rulings, researchers should consider any public disclosure a patent-barring event.

The increasingly stringent requirements for patents to include a complete and enabling written description, compounded with the effective loss of the one year grace period, makes it more important than ever to prepare and submit invention disclosure documents to the Office of Innovation and Industry Engagement well in advance of any planned public disclosures.  Early submission of invention disclosure documents will assist in the timely development of strategies related to technology validation and related patent-filing activities before conference presentations, manuscript publications, thesis/dissertation defenses, or other events.

If you have any questions, please do not hesitate to contact Michigan Tech’s Innovation and Industry Engagement Office at 487-2228.

Published in Tech Today