Patent Reform At The University Of Hawaii Tech Transfer Office
Patent Reform will be rolling forward for the next few years culminating in the implementation of the final provisions on September 16th 2013. The USPTO announced some new rules about prior user right, so not only do we have to learn and consider what are the effects of patent reform will be on the R&D organization, but results will only become apparent over time.
Lee Marvin Taylor is a Specialist, in the Entrepreneurship Program (COE) for Technology Liaison at the University of Hawaii. Following my interview with Melba Kurman, I was introduced to Lee as running a top University Tech Transfer office in the US. He graciously answered my questions, and also asked Eric Cohen, Intellectual Property Attorney, at Brinks Hofer Gilson & Lione to clarify a point.
John: What steps has your college taken to prepare for the America Invents Act?
Lee: The deadline is March 16th of 2013, and we are really kind of business as usual, however we will have to file earlier and more often. The grace period will go away. And so that means that while a good many of disclosures are given to us after publication, many Universities have relied on 102 b for the grace period. This has been the existing M.O. at Universities; professors do the publications, and then go to the tech transfer office. Obviously if it’s a pharmaceutical matter, the professor and the office work harder. Now given the changes to the law the Technology Transfer Office will have to work harder, to get a professor to file before disclosure, because of the loss of US and foreign rights. Our education about the changes will happen in the fall of this year.
Because we will be filing earlier and more often, no tech transfer office is not thinking about the issue of filing earlier, in the past Tech Transfer Offices had a much more casual attitude, with the grace period we really had that time to make a provisional filing. Now with the loss of the grace period, we will have to decide at an earlier stage to go with a utility filing.
John: What organizational changes have you made to prepare?
Lee: This is a massive change for patents, the biggest in 60 years. We have very good interaction between the University and the Hawaii state bar; as such we are developing educational and tutorial opportunities about the provisions. I think there will be a process of learning in the first half of the year, and implementation in the second half of the year.
John: How will Patent Reform affect the R&D organizations relationship with Universities?
Lee: It shouldn’t really change too much. I honestly think there’s going to be a slight decrease in collaboration, meaning that existing University portfolios will shrink. There is at least one carve out benefit of University based patents as opposed to non-University based patents.
Eric Cohen of Intellectual Property Attorney, at Brinks Hofer Gilson & Lione provided the following clarification regarding Carve-Outs benefit for Universities:
Eric: The carve-out is under the Prior Commercial Use Defense. The prior commercial use defense can be used by one accused of infringement. The exception is if the IP is owned by an institution of higher learning (university), the infringer cannot use the defense, and thus the university is in a very good position as against the infringer. The carve out is that the university cannot benefit from the exception if the activities required to reduce to practice the subject matter of the claimed invention could not have been undertaken using funds provided by the federal government. This means for example, if the IP relates to programs barred from using Federal funds (perhaps stem cell research), the university cannot benefit from the exception.
John: Will Patent Reform make Patents more important as a source of intelligence? Please explain.
Lee: Because of the loss of a grace period, there will be an increased aggressiveness in terms of putting IP out there. One of the issues though is that universities, and the tech transfer process is a speculative venture, it’s a small revenue source given the overall research budget.
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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.