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Reinventing the Patent Rules

President Barack Obama recently signed the Leahy-Smith America Invents Act, overhauling the U.S. patent system for the first time in 50 years.

The new legislation aims to reduce the backlog at the U.S. Patent and Trademark Office, which has more than 700,000 pending patent applications and commonly takes more than three years to reach final decisions.

One of the law’s most significant changes is that America will have a first-inventor-to-file patent system — parallel with most of the world — instead of its historical first-to-invent system.

Certain activities related to an invention that occur prior to filing a patent application will also be restricted, and other changes were made to address patent quality, infringement litigation and enforcement.  Another consequence of the law is that patent application fees will increase.  Some changes to the law happen immediately, while others will take effect over the next 18 months.

Jason Jenkins, UND assistant general counsel and a registered patent attorney, and Michael Moore, UND associate vice president for intellectual property commercialization and economic development, both note that some provisions of the new law will likely impact UND faculty and others who invent or otherwise develop intellectual property, even though the extent of that impact is hard to gauge.


researchers produce scientific knowledge, publications, and advancements in certain arts,” said Moore, who heads the Office of Intellectual Property Commercialization and Economic Development.  The office

is responsible for protecting and commercializing research innovations in fields across the University, including aerospace sciences, computer sciences, medicine and health sciences, engineering, and physical sciences.

“These advancements have commercial potential and can support a product,” Moore said.  “Intellectual property based on these research advancements can also form the foundation of a company that could take root in the Grand Forks area and hopefully provide jobs.”

The legal changes — while sweeping for some — won’t hit UND that hard.  The University already encourages prompt disclosures of inventions in order to protect the University’s patent rights.  Inventors who are proactive will be shielded from most of the negative consequences under the new law.

“For the University it’s going to be business as usual, but like Mike says, there will be an increased emphasis on being diligent about obtaining disclosures,” Jenkins said.  “What that means is that when anyone invents something, or feels that they’ve invented something, we’d like them to communicate that with our office.”

The process is straightforward.

“We’ll need to know what the invention is, the nature of the invention, and how the invention will be used, as well as how it was developed and funded,” Jenkins said.  “Then this office will review the patentability and marketability of the invention.  We’ll also confirm that the University has an ownership interest.”

The basic message to potential inventors at UND is that the stakes are higher with respect to the activities that occur before the patent application is filed.

“This new law eliminates the one-year grace period, within which the inventor can freely use, market, sell and describe the invention without compromising his or her patent rights,” Jenkins said.  “While certain disclosures by the inventor will remain protected, activity that is commercial in nature will generally no longer be permitted before a patent application is filed.  For sure, there are consequences if one is careless about IP rights.  I think that the new law reemphasizes our role in this process.”

“The reality for us in this office is that we have to continue to do a good job at soliciting information, reviewing, making informed decisions about IP rights,” Moore said.  “So we will figure out how best to further educate people on campus, maybe by putting together our own seminars.  We want people to understand that there’s been a change to the patent system.”

“We’re here to talk to people, answer questions,” Jenkins said.  “Come see us even if it’s the night before a presentation about something that might be protectable.  There are things we can do even at the 11th hour to protect the University’s intellectual property.  We want people to err on the side of contacting us.”

“Our office — with the help of the UND Office of General Counsel — drafts, files and prosecutes patent applications for inventions,” Moore said.  “We work with inventors to define their inventions and market technology portfolios of inventions, to promote new business ventures, and to build business alliances that will accelerate the transition of inventions to the marketplace.”

The office is also responsible for drafting and negotiating all of UND’s legal intellectual property agreements, such as confidentiality, material transfer and licensing agreements.

Juan Pedraza | Staff Writer