U.S. patent system undergoes major change

The new first-to-file system came into effect on March 16

· April 1, 2013, 8:56 pm

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The United States patent system is undergoing a major change, harmonizing with the existing systems of most other countries.

Under the new first-to-file system — which came into effect on March 16 — the inventor who first files a patent application for a new invention is granted the patent, regardless of whether he or she was the original inventor. This will mark the transition of the U.S. patent system from a first-to-invent system to a first-to-file system, which is currently used in most countries.

The Center for Technology Transfer at Penn, whose mission is to transfer inventions and innovative knowledge to outside organizations through managing patents, copyrights and trademarks, has taken steps in anticipation of the change in patent law.

Besides consulting with several patent firms and promoting dialogue between the center and researchers, CTT also looked into existing inventions to prepare for the transition.

“Well in advance of March 15, we performed a comprehensive review of our invention disclosures and pending provisional patents to identify cases that needed to be filed or converted into regular utility applications prior to the change in the law,” John Swartley, executive director of CTT, said in an email. “This resulted in a temporary surge in patent filings managed by our office.”

Under the original system, the patent was granted to the inventor that was first to conceive the invention, in the case that two or more inventors file a patent application for the same invention.

Even if the first inventor was not the first to file, he or she could potentially still be awarded the patent with proper supporting evidence, such as detailed lab notes showing the date of the idea’s conception.

Another major change is the rules regulating the grace period put into place under the old system. Previously, inventors enjoyed a one-year grace period to file a patent after publicly disclosing their invention. However, under the new system, the rules governing the grace period have been modified. The specific regulations regarding the grace period have not been confirmed, and the implications of the change are still not clear.

This transition may also mark a change in the daily routine of inventors.

Since the invention date was the most important factor affecting the success of patent filing under the old system, many engineers kept detailed notes in an inventor’s notebook. The notes had to follow specific requirements to be valid. In some cases, someone other than the owner had to read, sign and date every page to prove its validity. Moreover, the author had to write in the notebook nearly every day to show diligent pursuit of an idea.

“Since first-to-invent is no longer the rule, establishing the date of the invention isn’t as important,” Mark Yim, professor of mechanical engineering and applied mechanics, said in an email. “The format [of the notes] doesn’t have to be so rigid. You can keep notes on computer or a 3-ring binder and that’s okay. You can skip a day or a week or erase mistakes.”

Wharton and Engineering junior Pulak Mittal, one of the organizers of PennApps, does not see the new change significantly affecting the participants in the annual PennApps hackathon.

“We don’t see a lot of students pursuing patents for the types of inventions/designs they make at PennApps,” he said in an email. “For those who are interested in pursuing patents, of course, it may be a bit frustrating since a bigger business is in a much better position to file a patent than students with no background in that area.”

Although the change requires researchers and inventors to exercise more caution when publicly disclosing their ideas, Swartley also sees this as an opportunity to open up communication with the Penn community.

He thinks that it will provide an “impetus and opportunity for increased dialogue between the Penn community and CTT “in terms of “protect[ing] and commercializ[ing] the fruits of their research.”

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