Insights On The Patent Reform Act Of 2011 At Michigan Technological
The Patent Reform Act of 2011 has important ramifications for R&D organizations. As the start to a series of articles on the topic I spoke with Jim Baker, Ph.D., Executive Director, Innovation and Industry Engagement, at Michigan Technological University about his University’s preparation ahead for Patent Reform.
John: What steps has your college taken to prepare for the America Invents Act?
Jim: We have not done anything very much dramatic, no structural changes. One thing, we have tried to do, is better educate people on the consequences on public disclosure.
John: Do you think it is too early to tell with Patent Reform?
Jim: U.S. law now conforms more to international law, we are already managing to international law. Really we are already doing this, more or less. In the past, we have had US rights to fall back on in the event of a disclosure and that is now limited under Patent Reform but since we have historically worked to preserve international rights anyway little has changed with our core practices and operations.
John: How will first to file change filing behavior?
Jim: First to file will certainly push filing earlier. We try to preserve foreign rights by having a filing in before a disclosure date regardless. That said, we may lose some things in the U.S. that we wouldn’t have lost in the past. Silver lining on that is, it appears that the inventors own art is not going to be cited as prior art, and most often the premature public disclosures are the inventor’s own disclosures. We are not going to rely on this however at this point because not clear how this is going to be implemented.
John: What will be the consequences of first to file for R&D organizations and how they work with universities?
Jim: R&D orgs will proceed more cautiously, faculty need to publish and now publication is of more a consequence in the U.S. There will be more tension in the timeline between discovery and need to publish. From a timeline standpoint, this may cause universities to consider more exceptions on publication requirements as a condition of getting support from R&D organizations. International rights have always been important so publication has always been a significant issue but now with the potential loss of U.S. patent rights, the dynamic has changed.
Professors working with R&D organizations will likely need to be patient with their publishing interests, and universities may need to consider this in evaluation criteria for faculty who conduct research on behalf of R&D organizations.
R&D organizations are likely to ask for more publication restrictions than in the past, we will be asking can we accept those restrictions or do we have to turn that work away? Or can we manage those restrictions. Most sponsors are already asking for publication restrictions to preserve foreign patent rights but now they will be more aggressive. There’s potential for decreasing relationships.
John: What will be the consequences post-grant review on R&D organization relationships?
Jim: Concerns about the integrity of patent or portfolio, always been open, and R&D organization licensees have always conducted their own review. The post-grant review provisions provide an additional formal process for that review to be conducted within the PTO. As a practical matter, if IP is unlikely to survive the new post grant review process we’d have been very cautious about licensing it in the past.
John: Will you see more provisional patents?
Jim: My sense is we will see less, because the filing date is very important. You will need to make sure your application has adequate support for the claims you will ultimately be seeking, so we will lean more towards a formal patent filing in general.
John: will it push up the cost.
The loss of the grace period will push up costs, or increase struggle with decision making within a fixed budget. We’ve seen a lot of provisional patents wind up not being able to be formalized due to lack of support and enablement. Provisional patents have been declining regardless of patent reform but with the loss of the one-year grace period in the U.S. it will be even more important to have the first filing be rather robust, and therefore more expensive regardless of whether it is a provisional or formal filing.
John: How will Patent Reform affect R&D project selection and management?
Jim: I suspect it will change the nature of projects R&D organizations partner on and the circumstances in which they partner.
John: Do you need greater funds?
Jim: Maybe not budget constraints, rather the value of enabling data, is going to grow, going to be critical to have a filing date. R&D organizations may accelerate the schedule of research to address this. R&D organizations may decide to do more research themselves. Or may sponsor the majority of the project, may be willing to sponsor the development of the project at a higher level to get results sooner to get the data for the enablement of a patent application sooner. May go to university or do this inside researchers. Patent reform may accelerate sponsorship activities to get results faster.
John: Thanks Jim!
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The “Structural Packaging Summit,” is nearly here (February 28th – March 1st) and Newlogic will be presenting on patent reform, patent portfolio management and the effect it will have on packaging R&D.