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Stanford hosts educational sessions on 'first inventor to file' patent system

The new system for patent filing is the most significant change under the America Invents Act and will affect all researchers at Stanford.

On March 16, the United States will implement a first-inventor-to-file standard for patent filing, the most significant change under the America Invents Act, which President Obama signed into law in September 2011.

Under the new law, if two people separately apply for patents on the same invention, the patent will go to the inventor who filed a patent application first – assuming that each inventor invented independently.

Currently, the U.S. patent system has a "first-to-invent" standard; that is, the party that can prove it was the first to create an invention gets the patent rights.

To help researchers at Stanford understand the new law, which will bring the United States into line with most other patent jurisdictions around the world, the university's Dean of Research office is sponsoring educational sessions on campus.

The sessions will be conducted by intellectual property law attorneys.  Four sessions are scheduled:

"I encourage anyone from our Stanford community who would like to understand the implications of this important change in the U.S. patent law to attend one of these expert presentations," said Ann Arvin, vice provost and dean of research at Stanford. "Our Office of Technology Licensing will also be a valuable resource for questions related to handling intellectual property disclosures under the terms of the new law."

Stanford's Office of Technology Licensing (OTL), which is responsible for managing the university's intellectual property assets, has prepared an update, Highlights of the America Invents Act, which discusses key provisions of the new patent system.

Katharine Ku, director of OTL, said that while the new law technically preserves the traditional one-year grace period for an inventor to file a patent application after making a public disclosure, the complexity of the law makes filing after a public disclosure extremely risky.

"Thus, it will be very important for inventors to disclose inventions and work with OTL prior to publication, with enough time for its staff to evaluate the invention," Ku said.

"A good time to submit an invention disclosure is when there is enough data to support the filing of a patent application, often when a manuscript is being prepared. Each invention will still be evaluated for commercial potential when disclosed. But the OTL has made a decision that we will not even consider filing a patent application if the invention has been publicly disclosed."

Ku said the OTL believes it makes more sense strategically to proceed as if the United States had transitioned to a true "first-to-file" system, as exists in Europe.

She said that in the United States, patent applications are filed in the name of the inventors, whose exclusive rights to their creations are guaranteed under Article 1 of the U.S. Constitution. American patent laws have to be "inventor-focused," hence, the "first-inventor-to-file" language in the new law.

In the rest of the world, the "first to file" could be a person or an institution, such as a company, a research institute or a university, she said.

"Under the new law, it's a race to the Patent Office, and once you've published all bets are off," Ku said. "We want researchers at Stanford to come to us so that we can decide whether or not to file a patent application before they publish – period."

The OTL provides detailed guidance to Stanford inventors, including an online disclosure form, on its website.

Ku emphasized that patent applications still need to be as complete and detailed as possible at the time of filing.

In its update, the OTL said the new patent system is intended to provide inventors with greater certainty regarding the scope of protection for intellectual property and to promote international uniformity by harmonizing the U.S. patent system with those of its trading partners.

"The America Invents Act also makes it easier to challenge a patent after issuance, and to provide input while a third party's patent application is being examined," the update said. "New, higher standards will make it harder to obtain patent re-examination. And patent applications pertaining to technologies deemed critical to the economy can now potentially be fast-tracked for prioritized examination."

The U.S. Patent and Trademark Office has created an online guide to the new legislation, including informational videos, frequently asked questions, press releases, speeches and a blog. The federal agency also created a help-line telephone, 1-855-HELPAIA, and email, HelpAIA@uspto.gov