logo

Tag : IP

America Invents Act: part 1

"This is an invited post from patent attorney Vadim Gordin of GordinIP, who is not affiliated with BioBM Consulting. This article is intended to be purely educational and cannot take the place of legal counsel. If you have a patent, trademark, or copyright matter to discuss, the author can be reached via the contact form on his practice website at www.GordinIP.com."

Rules of the Game: What every Engineer, Scientist, and Inventor should know about the Patent Reform Bill

On Friday, September 16th, 2011 President Obama signed into law the America Invents Act (hereafter AIA, full text here: pdf of AIA).

The AIA has had no shortage of both backers and detractors that have each said that it would be either the panacea or poison for American innovation. Regardless of where your own opinion falls as to the AIA, the bill and its changes are now set to become a very real part of the technology development landscape in America.

This article will be published in four weekly installments. In each installment, I will examine how the AIA changes four key areas of the patent process for engineers, scientists, and inventors.

Part 1: Patent Filing Dates and Deadlines
• Part 2: What content needs to be included in a Patent Application, New Mechanisms for Challenging Patents
• Part 3: How products protected by patents should be marked, New mechanisms for Enforcing Patents
• Part 4: Changes to Patent Fees

First To File Explained

This is one of the most talked-about and misunderstood provisions of the new law. In order to understand what it means for inventors and companies, we need to first compare the current US patent system to those in other parts of the world.

Before the AIA, standard advice to American inventors was to keep accurate, signed, and dated records of their innovations before patents were filed. The purpose of these records and notebooks was to establish, as clearly as possible, the dates on which inventions and aspects of inventions were conceived. This was because the patent laws of the United States protected the first person to invent a given technology. Further, because of this focus on inventorship, inventors in the United States were given one year from first sale, public use, or printed disclosure of an invention to file for patent protection.

Other parts of the world, notably Europe and Asia, have strict “First to File” systems whose focus is on the act of submitting a patent application to a given patent office. There, any public use, sale, or pubic disclosure of an invention before its submission as a patent applicaiton prevents anyone, including the inventor, from pursuing patent rights.

With the coming of the AIA, the US has shifted from a First to Invent system to a First Inventor to File system. In broad terms, this means that priority of invention is given to the first inventor to file a patent application. While this sounds similar to the pure “First to File” systems in place in other parts of the world, there are several key differences that American inventors, engineers and scientists should be aware of.

• The AIA maintains the US system’s focus on inventorship. Therefore, in order to receive a patent one must have still have been the actual inventor.
• The AIA shifts the date of priority for US patent rights to the date on which the inventor first filed a Patent Application.
• Under the AIA, American inventors no longer have a one year grace period during which to file a patent application after public use or sale of inventions, bringing US laws largely into line with the rest of the world.
• The AIA creates a one year grace period after publication of the invention by the inventor within which he can file for patent protection.

To illustrate the different patent systems and how they would play out in Europe compared to America before and after the AIA, let’s use a fictional example under the following timetable:

    June: David invents a novel device for time travel.
    July: David publishes an article describing the device in the Annuls of Time Travel.
    August: Another inventor, Rob, working independently from David, also invents a similar device for time travel and immediately files for a patent.
    September: David files for patent protection.


So what would happen under the different systems?

    Pure First to File (Europe, Asia, Canada): Both David and Rob are precluded from getting a patent because David published his article before either filing.
    First to Invent (United States before the AIA): Rob’s patent is barred by David’s invention in June.
    First Inventor to File (United States under the AIA): Rob’s patent is barred by David’s publication in July.


So what has changed about how inventors publish, sell, and patent their innovations?

1. When to File

Even before the AIA, American inventors interested in securing rights in Europe, Asia, and South America had to be weary of publishing or selling their inventions before making filings with a respective patent office. This is double true now that America has aligned itself with the rest of the world by barring applications on inventions that were sold, publicly used, or disclosed before an invention’s filing date.

In order to help alleviate the added cost of these filings, the AIA includes new fee guidelines which will be discussed in the fourth installment of this article.

2. When to Publish

As shown in the example above, an inventor’s own publication of the invention gives him one year within which to file for patent protection. While this may seem like a cheaper, quicker way to prevent others from filing patent applications, several considerable caveats apply:
a. Publishing about a Invention before filing an application bars an inventor from pursuing rights in countries with pure first-to-file systems.
b. Publications prepared by non-attorneys often contain enough information to render an invention obvious and therefor bar patentability without having enough detail to secure patent rights. As before the AIA, your best bet is to have an attorney review a publication before it goes out.
c. If you’ve gone so far as to have you publication checked and edited by an attorney, you should be filing a provisional application as it will not preclude rights in the rest of the world.

3. When to Sell or Publicly Use

In the past, many inventors have delayed the patent process in favor of first generating revenue or buzz around a product. Once the AIA comes into effect in 2013, such actions would preclude patent rights.

Even before the AIA comes into effect however, inventors are cautioned that a delay in submitting a patent application will often result in precluding patent rights in Europe, Asia, and Canada.

4. Lab Notebooks and Invention Records

While many have understood the above changes to mean that the days of lab notebooks and invention disclosures are gone, the answer as to how the AIA will affect innovation record-keeping in America is much more nuanced.

While the AIA has largely obviated the question of “when” an invention was conceived for the purposes of patenting, “who” invented, in what order, and under what circumstances remain important inquiries for the patent system, many universities, tort liability, and regulatory bodies like the FDA. Consequently, inventors are strongly advised to continue, as taught, to maintain accurate records of their labors.

While some of the changes covered in later installments take effect immediately, the AIA sections described in this article will take effect in March of 2013.

Next week: What content needs to be included in a Patent Application, New mechanisms for challenging patent validity.

"About the Author: Vadim Gordin is a patent attorney and technology broker licensed to practice law in the State of New Jersey and before the United States Patent and Trademark Office. He can be reached via the contact form on his practice website at www.GordinIP.com."

Supreme Court: Bayh-Dole Act

Maximizing distributor performance allows bioscience companies to efficiently grow revenues.Last week, the Supreme Court ruled in the case of Stanford vs. Roche Molecular Systems, which has implications for academic inventors who receive federal funding for their research. Stanford was suing Roche Molecular Systems, claiming saying RMS did not have the rights to a patent which described a test to quantify the HIV load in a patient’s blood, which is now commonly used. RMS had bought the rights from Cetus Corporation, a private company at which a Stanford fellow, Dr. Mark Holodniy, had been assigned by Stanford to conduct research and at which Dr. Holodniy had invented the HIV load test in question.

In their prosecution, Stanford used the Bayh-Dole Act to argue that the intellectual property was rightfully theirs. For those who may be unfamiliar with the act, the Bayh-Dole Act (also known as the Patent and Trademark Law Amendments Act) granted universities, non-profit institutions, and small businesses within the United States the rights to intellectual property resulting from U.S. government-funded research. In defense, Roche Molecular Systems argued a simple point of wording. Dr. Holodniy’s contract with Stanford stated that “I agree to assign” intellectual property resulting from his fellowship at Stanford to the university, while his contract from Cetus stated that “I will assign and do hereby assign” such IP.

Despite that the Bayh-Dole Act states (albeit extremely verbosely) that rights to government-funded inventions lie first with the funded firm, then with the United States government, and lastly with the individual inventor, the Supreme Court ruled 7-2 that Cetus indeed rightfully owned the IP that they sold to Roche Molecular Systems. Chief Justice John Roberts wrote for the majority that the Bayh-Dole act does not automatically strip employees of the rights to intellectual property and because of the weak wording of Stanford’s contract (saying “will assign” instead of “do assign”) that Stanford never actually held the rights to Dr. Holodniy’s invention in the first place. You can read the full case syllabus and opinions in this pdf on supremecourt.gov.

What is of significance here is that Justice Roberts affirmed in the court opinion “the general rule that rights in an invention belong to the inventor”. This would indicate that companies, universities, and other institutions may need to have a very clear and explicit agreement that the individuals turn over their intellectual property to their institutions or else the individual may actually retain the rights, especially when the work is federally funded.

Disclaimer

BioBM Consulting is not a law firm and does not provide legal advice. If you have any questions regarding the law, please refer them to an appropriate licensed legal professional. For questions related to patent law, especially as it pertains to life science or biomedical patents, we highly recommend Gordin IP.

"Are you a life science inventor and have a great idea that you would like to commercialize? BioBM may be able to help you. Our inventor services allow scientist-inventors to inexpensively commercialize and profit from their inventions. We can guide you through all the necessary steps to sell, licence, or build a company around your intellectual property. Feel free to contact us and confidentially discuss your idea and desires."

What Inventors Don’t Think Of

Referral-based marketing works best in environments where there is open and fluid interaction between populations of customers, something that life science research environments lack.Most great life science inventions come straight from the bench. That also means that most great life science inventions come from career scientists, who are most often inexperienced in commercialization. There’s a host of things that you should think about before rushing to commercialize and many scientists turned first-time inventors often neglect one or more such issues. We’ll go over a few commonly skipped considerations so when you have the next great idea, you can properly vet it before you run to your patent attorney.

1) Be sure you own your IP!

There’s a good chance that great idea of yours may not belong to you (at least not totally). If you developed it at work or school, your institution may have a partial or full claim to your IP. Check your employment contract or other signed employment documentation. A similar issue: if you have a great idea that is essentially an improvement of another technology but is based on that other technology (in other words, your invention would require the existing technology in order to operate) you can claim rights to the improvement and file a patent, but will most likely be unable to commercialize it due to needing protected technology in order to do so.

2) Is your idea as good as you think it is?

It’s easy to get really excited about an idea for a new invention, but your emotions have to be tempered with reality and pragmatism. Is your idea really as good as you think it is? Understand the key differentiators of your technology. For example, would it be cheaper, faster, easier to use or would produce better results? What Ask some trusted friends and get some feedback or set up a survey using a free online survey tool (without giving away the idea!) and leverage social networks, forums, colleagues, professional networks, etc. Be sure others think your idea is a good one as well.

3) Is there a market for your invention?

Just because you need something doesn’t mean anyone else does. Would this product be used by a large enough market in order to justify pursuing it? This decision will need to be based primarily on three things: market size, price of the product, and cost to develop it. Ballparking at this stage is perfectly fine, but you want to be reasonably certain that your development costs would be far less than your total potential lifetime sales.

4) What would it cost to make / what would scientists be willing to pay?

This is a frequently overlooked issue early on. While without manufacturing experience or having worked in a manufacturing environment the cost of building a product can be difficult to quantify, you can think in terms of simplicity. Simple things are usually cheaper and easier to make than more complex things. If your invention would be approximately 20% better in a certain performance metric than the next best technology available but would be 100% more complex, think long and hard as to whether researchers would pay about twice as much for that 20% increase in performance.

Another small piece of advice for those innovative minds out there – don’t always think big. Some incredibly profitable yet relatively simple inventions have come in areas that were ignored for decades. Things slip under the radar all the time, and if no one else is thinking about a topic the lack of competition among innovators in that area can make commercialization much easier and improve your likelihood of success.

"Are you a life science inventor and want help or advice regarding commercialization of your invention? BioBM can help you maximize the profits you realize from your idea. Our experience bringing products to market and industry connections can help you validate your idea and bring your product to market faster and more profitably. Contact us to confidentially discuss your idea."

BioBM Launches Inventor Services

BioBM Consulting is pleased to announce the launch of its new “Inventor Services” division, offering commercialization services to life science inventors and others who wish to commercialize intellectual property with a life science research focus. Celebrating the latest in BioBM’s expanding and innovative service offerings, BioBM Principal Consultant Carlton Hoyt gave the following statement:

Statement from Principal Consultant Carlton Hoyt

BioBM recognizes the massive creative capacity of life science researchers and simultaneously realizes that inventors in life science laboratories may lack access to key business and marketing experience necessary for effective and profitable commercialization of such inventions. With BioBM’s unique positioning, we recognize the value we have to offer life science inventors and can help them commercialize novel biotechnology innovations in a variety of ways. We strive to help life science inventors meet their commercial goals while expediting the development and marketing of advancements in life science tools and processes that will forward the sciences and, ultimately, human health. BioBM looks forward to fruitful collaborations with inventors from all areas of the life sciences.


The Inventor Services division of BioBM is already taking inquiries. For more information on how BioBM Consulting works with inventors, click here. For more information on the portfolio of services offered to inventors, click here.