Intellectual property protection, in particular patent protection, is an important aspect of university technology transfer. Such rights give the licensee a proprietary position that allows for investment in continued development and helps ensure that the public ultimately benefits from basic research that results in commercial product.
In terms of patent rights, it will be important to watch in the coming years how new factors such as the Leahy-Smith America Invents Act (AIA) affect academic innovation. The law represents the most significant change to the U. S. patent system since 1952 and switches patent rights from a first-to-invent system to a first-inventor-to-file system.
This change presents particularly challenges for us in academic technology transfer as our faculty function in a “publish or perish” environment. Under the new law, researchers are no longer protected through early conception of an invention, and disclosures to third parties can impair patentability. Most researchers are familiar with the role and necessity of lab notebooks, particularly in determining when an “invention” occurred. This note taking requirement was not eliminated with AIA, but in fact its importance is expanded.
Although there are changes, AIA does retain certain protections for researchers, such as the grace period for an inventor’s own disclosures. Specifically, a disclosure made within one year before filing is not prior art if it was made by the inventor or under a joint research agreement or if it was made by a third party but the inventor made an earlier public disclosure.
Finally one of the changes that could benefit biomedical researchers is a broader protection for collaborative research. Disclosures in an earlier-filed patent application are eliminated from prior art if they are co-owned. Applications are considered co-owned if the current invention was made under a joint research agreement, likely increasing the importance of such agreements.
“Here at Emory we are very lucky to have the Emory Patent Group (EPG) to lead us through all these changes and find the right protection strategy for each of our innovations” says Cliff Michaels, OTT case manager.
In light of these changes, universities must continue to advocate for interpretations of AIA that accommodate research and publishing. It is one of our social responsibilities as an institution of higher education and research. These publication and patent strategies must adhere to the dual mission of the university to both expand the frontiers of knowledge through the broad public dissemination of research results and to assure that the public benefits from new discoveries based upon federally funded basic research.