University of North Dakota Faculty/Staff Newsletter

Changes in U.S. patent law take effect March 16

March 16 will mark the full implementation of the Leahy-Smith America Invents Act (AIA).  As part of some long-anticipated changes in U.S. patent law, we are transitioning from a so-called “first to invent” system to a “first to file” system.  For patent applications filed before March 16 – including all of the University’s issued patents and pending patent applications – the previous law will apply.  Applications filed on or after March 16, 2013 will be subject to the new law.

For many inventors and for inventions that have not been publicly disclosed, it will be business as usual as the standards for patentability will not be materially affected.  However, in cases where multiple inventive entities are claiming the same invention, patents will be granted based upon the order in which the applications were filed instead of when an invention was first made.  Also, certain protections (such as the broad, one-year grace period for public disclosure activities occurring prior to filing a patent application) will be lost and the failure to file a timely patent application could jeopardize the patent rights altogether.  As before, early public disclosures of inventions can also have a devastating effect on foreign patent rights.

To be sure, the University has always encouraged prompt disclosure of inventions.  Because of these changes in the law, there is a heightened emphasis on contacting the Office of Intellectual Property Commercialization & Economic Development (IPCED) as soon as possible, and preferably prior to ANY public disclosure, publication, public use, or discussion with outside entities.  Any questions about inventions, patents, or the University’s intellectual property policies should be directed to the Office of IP Commercialization & Economic Development (IPCED), Twamley Hall, Room 102, 777.6772, www.und.edu/ipcommercialization.

For additional information, see www.uspto.gov/aia_implementation/index.jsp and http://www.aiarulemaking.com/index.php.