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Effective March 16, 2013, the United States will join the rest of the world and move to a first-to-file patent system. The change comes as the result of the passage of the America Invents Act (AIA) signed into law by President Barack Obama on September 16, 2011. The United States was the last country to make the switch to a firstto-file patent system after Canada and the Philippines made the move in 1989 and 1998 respectively. Under a first-to-file patent system, the US patent office will award a patent to the first inventor who files a patent application without regard to who actually came up with the invention first. Under the previous first-to-invent patent system, an inventor had the option to prove to the patent office their date of invention was earlier and could be awarded a patent, even if their competitor filed a patent application first. The procedure to determine the date of invention was termed an “inference proceeding” at the US Patent and Trademark Office and it will soon become obsolete. Proving your date of invention under an inference proceeding was one of the reasons why it was important for researchers to keep detailed lab notebooks that should be signed and witnessed regularly. Supporters of the change to a first-to-file patent system claim the move will reduce risk and uncertainty in the patent process and lead to increased investment in early stage technologies. They also claim it will harmonize the US patent system with the rest of the world. Critics of the move claim the change will penalize independent inventors and small businesses who may not have a patent attorney on staff or be able to afford frequent patent filings to protect their innovations. Although the Association of University Technology Managers (AUTM) came out in support of the America Invents Act, many well respected universities within the AUTM community disagreed publically with AUTM’s support and claimed the changes implemented in the AIA will hurt university technology transfer activities as well as university start-up companies.
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By: Bradley C. Fach, Senior Associate Director Office of Technology Transfer UNC Charlotte’s Office of Technology Transfer is fortunate to have one patent attorney, one patent agent and a patent paralegal on staff and is able to quickly file patent applications in-house, typically within 3-5 business days after receipt of a new invention report. Because of the change to a first-to-file patent system, it is extremely important that faculty and student researchers work with the office early on in the invention process and well before publishing or presenting their idea outside of the university. About the author: Bradley Fach is a registered patent agent with the United States Patent and Trademark Office and has been filing patents for over 12 years. Mr. Fach has filed over 500 patent applications in a multiple technology areas ranging from biotechnology to consumer products and software and is currently the Senior Associate Director of UNC Charlotte’s Office of Technology Transfer. Mr. Fach can be reached by email at: bfach@uncc.edu 2013
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