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Opinion: Racing Toward Invention

A newly instated patent law discriminates against academics and small biotechs.

By | July 23, 2013

Seal of the United States Patent and Trademark OfficeWIKIMEDIA, US GOVERNMENTThe introduction of the Leahy-Smith America Invents Act (AIA) on March 16, 2013, has already begun to shape the patent process for a nation of entrepreneurs, scientists, and innovators. The law replaces the former “first to invent” declaration of ownership with “first to file” for an issued patent. In other words, it doesn’t matter who had the idea first, only who brought that idea to the attention of the US Patent and Trademark Office (USPTO).

The controversial law has stirred great debate concerning how this shifting process reflects our nation’s bias toward corporations over smaller businesses and independent or university-affiliated scientists. No doubt, the first-to-file law will create a race to the USPTO for big businesses and independent innovators with sufficient capital to usher a product through the patent filing process, which costs between $7,000 and $10,000. But what about small biotechs and academics without adequate funding? Is the new law killing the American Dream?

Before the AIA, startup companies had a year after public display to file for their patent. That year provided them the opportunity to raise funds and awareness and gather the needed legal team to properly file with the USPTO. Currently, however, those without the resources to file first have an incredible burden placed on them to retroactively show ownership. This paradigm shift greatly inhibits new company creation.

In contrast, corporations can file several patents simultaneously, simply for the purpose of being the “first to file.” By submitting a new application with an updated version of an idea anytime they deem appropriate, they can block less-endowed inventors who simply cannot afford to file an application due to the costs involved.

The impact of the AIA law on venture funding for smaller businesses could be monumental. The purpose of venture capital is to invest in the future promise of technology and patent revenue. The benefit of this is that venture capitalists have the opportunity, in many cases, to retain the patented technology as their own asset even if the startup fails. With that promise threatened, investment in small business becomes a much more precarious scenario.

In addition, this law is a setback for academic institutions, where scientists and inventors are encouraged to openly communicate research. Previously, researchers could balance such openness with reliable protection for intellectual property; due to the formerly allotted 1-year grace period,  university faculty who spoke publicly at conferences or published their findings before filing a patent application were protected. However, under the new rules, any subsequent disclosure by a third party about the invention before the inventor files his application may be considered “prior art,” unless the applicant can adequately demonstrate to the USPTO that the second disclosure was based entirely on the original disclosure. While competition and even secrecy existed in academic settings prior to the AIA, the level of secrecy and paranoia will justifiably increase due to the fact that larger corporations can and will do anything to keep competition out of the market, thereby making it more difficult for university-affiliated scientists to file with the USPTO.

The enactment of the AIA radically alters how entrepreneurs, scientists, and inventors pursue their creations. Seeking a qualified lawyer with patent and intellectual property rights experience is a crucial first step in securing future protection. A record of invention, research, and revenue potential, along with a provisional patent application, is also essential to progress.  But legal representation and proper documentation are no longer enough. The new process places more importance on the means to file, rather than true innovation. How many beneficial ideas will be quashed by mounting costs or co-opted by big business? It’s hard to say. However, influencers should note that in our current exploration of revolutionary technologies and ideas, proper rights to intellectual property and discovery are essential to our progress.

George Lewis is the Chief Scientific Officer and cofounder at ZetrOZ, a Connecticut-based biotechnology company and the maker of the word’s smallest ultrasound pain therapy device. Connect with George on Google+ and LinkedIn.

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Comments

Avatar of: LeeH

LeeH

Posts: 31

July 23, 2013

The author avoided the issue of enablement of an invention which is required. Filing alone will not secure a patent.  I vew the greatest impact of the change to diminishing the openness of scientific discussion of thoughts and ideas

Avatar of: SystemicZ

SystemicZ

Posts: 1

July 23, 2013

Once more academic-based researchers will be playing catch-up just to get their due in the invention process: unless their university base is well heeled in the tech-transfer sector.

Avatar of: GNR

GNR

Posts: 1

July 30, 2013

Unfortunately Mr. Lewis has asserted a number of points in his Op-Ed regarding AIA that are quite frankly completely wrong. 

For the sakeness of brevity here are some top-line points, that can help clarify the pertinent issues at hand due to AIA.

 

1) The US Transitioned from a "First to Invent" to a "First Inventor to File" system not a "First to File System", there are elements of the "First to Invent" protocols kept in place to protect original inventors, but the system was changed such that to work in better cooperation for global IP filing procedures.

 

2) The patent application filed still requires an Inventor to sign off on the "Oath and Declaration" of filing, ergo companies can not just "willy-nilly" file patent applications as they please.

 

3) As someone who works with the Angel and VC Investment communities from IT to Life Sciences to CleanTech, there has been no evidence indicated that AIA will be a problem. As is most investors do not even understand the deep-dive technicalities around IP evaluation, which is why guys like me get called in to suss out the "real" good from the bad when conducting IP diligence on an investment opportunity.

 

4) Third party disclosures can be broken down from Pre-Issuance and Post-Allowance Challenges, which have their own series of metrics for consideration by the USPTO. These tools are quite effective for the public to be engaged in ensuring better quality metrics through the power of crowd-sourcing can occur for the USPTO, as technology and industry trends change much more rapidly.

 

5) Applicants still retain their 1-year grace period after initial disclosure via a provisional application to file a non-provisional application.

 

6) AIA allows for micro-entity discounts, which essentially allows startups and small companies to take advantage of a 75% discount on USPTO filing fees for a limited number of patent applications.


 

   I would encourage Mr. Lewis and The Scientist community to register for the National Council on Entrepreneurial Technology Transfer's FREE Patent Webinar Series which is coordinated jointly with the US Patent & Trademark Office and the US National Institute of Standards & Technology to obtain the correct set of facts on all issues pertaining to AIA and what it means for small and large companies. A lot of what Mr. Lewis attempts to explain (albeit incorrectly), can be found drawn out in lucid and clairvoyant form via the following web-link: http://center.ncet2.org/index.php?option=com_content&view=article&id=445&Itemid=87

     Former Patent Examiner and Senior Policy Advisor
   US Department of Commerce
   US Patent & Trademark Office
   Office of Innovation & Entrepreneurship
Avatar of: JToeppen

JToeppen

Posts: 28

July 30, 2013

Individuals are innovators and corporations are businesses.  Institutions rely on indivuals to invent and attorneys to secure IP.  Inventors rarely harvest much of the fruit of their inventions from what I have seen.

We are on a path that continues to demotivate the actual producers of wealth.  Corporations will have "control" of the fountain that no longer produces.  Innovators get tired of being exploited, fewer and fewer Americans go into engineering because the rewards are less than those provided by looting our system.  

The US patent system has not protected inventer in the international scene for some years.   Why bother with a US patent if it does not protect international IP?  Just go for the international IP and don't waste time on a system that is already defective that will not be fixed.  Some people think that the system is already fixed, but in the "fix is already in" sort of way.

Avatar of: JCW289

JCW289

Posts: 1

August 21, 2013

This Opinion should never have been published.  It is an ill-informed rant, not an informed opinion formed defended by fact.  It simply spreads mis-information.   

see GNR below and http://goo.gl/1CwpOf

Avatar of: ProfJ

ProfJ

Posts: 1

October 27, 2013

It should be pointed out that the AIA just brings the USA in line with most of the rest of the World. 

In addtion having a patent does not ensure that you have 'freedom to operate', i. e., to use your patent you must also show that you have the rights to use all the other intellectual property on which such an implementation may depend. Filing by Academics only takes a few days and doesn't interfere with spread of knowledge. Quite the opposite. Patent based onthe latin patentere, to lay open, was originally conceived to ensure that valuable knowledge is published, and not sequestered in 'in house trade secrets. Students should be made aware of this andencouraged to use patents more often as literature citations.

Enablement as part of the patenting process always had low priority in the USA compared to, say, Europe and Japan, apparently assuming that nonsense 'inventions' will neither block any serious developments nor be long maintained due to the yearly patant fees which increase with time. 

 

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