On September 16, 2011, President Obama signed the America Invents Act (AIA). The AIA has been legislated for the past six years and marks the first major change in patent reform for the past sixty years. Although the AIA covers different areas of patent prosecution and patent litigation, this article will focus on the AIA’s impact on tech transfer offices.
As a result of the AIA, tech transfer offices now need to file their inventions as early as possible because the United States is now a first-priority country and not a first-to-invent country. Under previous patent laws, the United States was a first-to-invent country, meaning that the first inventor to conceive and reduce the invention to practice received the patent. Now, under the AIA, the first person to file at the USPTO receives a patent. Therefore, tech transfer offices will need to file their inventions early with provisional applications so that the USPTO designates them as the first filer. Although the filer must meet the requirements of a provisional application, a provisional application gives tech transfer offices a year to decide whether to pursue the patent application. Since there will be a race to the USPTO, tech transfer offices will need to strategically determine which provisional applications to pursue and which provisional applications to discard. As a result, tech transfer offices should hire a valuation firm with the technical knowledge to analyze the offices’ alternatives.
Additionally, passage of the AIA helps tech transfer offices because the USPTO will be more efficient with its procedures. First, most technology transfer offices support start-up firms and collaborate with these start-up firms to optimize future success. Under the AIA, start-up firms can get fast-tracked consideration of their patent applications. Under previous patent laws, start-up firms needed to wait about 30 months for a guaranteed decision. Now, under the new law, start-up firms will have a guaranteed decision from the USPTO within 12 months. As a result of the decreased waiting time, both technology transfer companies and start-up firms will be able to utilize their patents more effectively in the marketplace because they will have a quicker guaranteed decision from the USPTO. Second, passage of the AIA helps tech transfer offices because the AIA is taking measures to reduce the backlog of patent applications. As a result, tech transfer offices will have a decision from the USPTO and tech transfer offices will be able to use, license, or sell their inventions more quickly.
Passage of the AIA affects tech transfer offices in at least two ways. First, tech transfer offices will have to file their inventions as early as possible to maintain their inventions. Second, the AIA benefits tech transfer offices because the AIA provides for more efficient procedures from the USPTO. Specifically, AIA decreased the amount of fast-tracked consideration from 30 months to 12 months. Furthermore, AIA will reduce the backlog of patent applications. It will be interesting to see how tech transfer offices react to the AIA.
