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Three Years After The America Invents Act: Practical Effects On University Tech Transfer

By Robert MacWright

The America Invents Act (AIA) has significantly changed the way university technology transfer offices operate. On the plus side, the first-inventor-to-file rule has allowed for simpler invention disclosures, since disclosures no longer have value as conception records. The AIA has also provided more relaxed procedural rules, avoiding the mad dash to get inventor signatures, and allowing universities to file in their own name from the outset. On the negative side, technology transfer offices have to make filing decisions faster, as the first-inventor-to-file rule makes it risky to wait for more data; another inventor could get to the Patent and Trademark Office (PTO) first, and there is no longer a one-year grace period for prior art. The AIA also created quasi-judicial proceedings known as Post-Grant Review (PGR) and Inter-Partes Review (IPR), in which claims are interpreted more broadly, and can be invalidated with less proof than if those same claims were reviewed by a federal court. Based on the rate that IPR proceedings are invalidating patents and patent claims, the AIA may make it more challenging and expensive for universities and their licensees to defend those patents that are most likely to succeed in bringing new products and services to the public.

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