Memo on Patent Reform

Monday, September 26, 2011

Dear Georgetown Inventors and Future Inventors,

On September 16th, President Obama signed into law the “America Invents Act,” also known as HR 1249, or the Leahy-Smith patent reform bill. This legislation has been under consideration in various forms by the Congress for several years. Intended to reduce patent backlog at the United States Patent and Trademark Office and to foster innovation through improved patent quality, the legislation has supporters and detractors, but most academic organizations consider it a positive step toward much needed patent reform. The act has the potential to affect all patent applicants and patent holders. Some of the changes are already in effect and others will be implemented in the next year or 18 months.

I do not anticipate a drastic change in our overall process for protecting the University’s intellectual property; however, there is likely to be noticeable impact on costs, time lines, and the vigilance and diligence necessary to uphold the patents in which we have invested.

Points of particular importance to the University:

  1. As of September 26, 2011, virtually all patent fees will carry a 15% surcharge which will be in effect until the overall fee structure undergoes a complete overhaul in the near future, and new fees are implemented. Certain types of patent applications in limited numbers may receive “Prioritized Review” for an additional fee of $4800, or $2400 for small entities (including universities).
  2. Coming into step with the rest of the world, on March 16, 2013, the U.S. will become a “first to file” country, meaning that no longer will it be possible for an inventor to win a patent simply because he or she made the invention first. Public disclosures of an invention prior to filing may be more damaging to potential patent rights under the new law than under the previous one. It will be important for faculty and our University communications functions to more carefully determine before public disclosure whether any inventions are mentioned in their manuscripts, websites, grant applications, conference presentations, outside meetings, and press releases. The Office of Technology Commercialization (OTC) will continue to offer assistance in determining whether inventions are included in information intended for dissemination or discussion outside the University.
  3. Several changes, including altered definitions of “prior art” and modifications to the time during which patents may be challenged or prior art may be raised (coming into effect between September 26, 2012 and March 16, 2013), will make it increasingly important for OTC and inventors to be extremely thorough in identifying prior art and bringing it to the attention of the patent office. Given the delay in implementing some of these changes including the first-to-file system, it will still be critical to maintain accurate laboratory notebooks, including having them witnessed and countersigned.

These and other changes of the America Invents Act will be explained in more detail at upcoming OTC seminars and open-houses. We look forward to assisting our University inventors in understanding and navigating patent reform so that we may seamlessly continue to facilitate the development and commercialization of our University’s innovations. Please feel free to call OTC directly with any questions.

Best wishes,

Claudia Cherney Stewart, Ph.D.
Vice President
Office of Technology Commercialization