The New Reality Show for Universities: Implementation of Patent Law Changes in 2013
In September 2011, the America Invents Act (AIA) was signed into law. The AIA makes many changes to U.S. patent law, some minor and some major. Various pieces of the law have become effective over the past year or so. However, the biggest change for universities will take place on March 16, 2013. After that date, any patent application filed will be subject to a “first-to-file” system instead of the current U.S. system of “first to invent.”
A “first-to-invent” system gives priority to the first person to invent. Evidence (such as a laboratory notebook) supporting conception of the claimed invention prior to the filing date of the application may be considered to determine the first inventor of the invention.
A “first-to-file” system gives priority to the application/invention with the earliest filing date.
With respect to any patent application filed after March 16, 2013, an applicant will no longer be able to rely upon an earlier date of conception when prior art has an earlier date than the effective filing date, if the prior art is not his or her own disclosure. Thus, an inventor who waits to file an application may risk losing his or her patent rights to an inventor who invented later but filed first.
What does this mean for university inventors, UNM and STC? The major implication for all of us is that it will be important for inventors to disclose their inventions to STC as soon as possible, before making any disclosures to third parties. It will then be important for STC to file a provisional patent application on the idea immediately. Those UNM inventors who work with STC know that we can do so quickly. Sometimes we have to file a provisional patent application on the same day that we receive the information, due to public disclosure considerations. However, after March 16, 2013, if a third party learns of your idea and files a patent application before STC files, the AIA makes it much more difficult to counteract and you as the inventor may lose the rights to your idea, even if you were first to invent.
In order to take full advantage of the “first-to-invent” system before it expires on March 16th, STC would like to file as many provisional patent applications as possible on new UNM technology by March 15th. So, if you are a UNM inventor and have new technology, in whatever stage of development, that has not been disclosed yet to STC, please contact STC as soon as possible
Obviously, the AIA poses challenges for the university community, which has a primary mission to disseminate new knowledge. STC certainly does not advocate slowing down the pace of disseminating your research results. We simply ask that you disclose them to STC before you communicate the results to a third party, even if you consider the work to be quite preliminary. We will work to file a patent application quickly so that you can move forward on your timeline with public disclosure. Even though we would prefer not to have this change in the patent law, I think that STC and UNM are well positioned to manage the first-to-file changes.
If you would like a further summary of this and other changes from the AIA, go to the STC website and download the presentation on the AIA made recently by one of STC’s patent attorneys, at
Lisa Kuuttila, President & CEO, STC.UNM