Provisions of the America Invents Act Tailored To Non-Profits
The America Invents Act (AIA) shifts the US patenting system from a first-inventor system to a first-inventor-to-file system. To mitigate some of the effects of this shift on universities and other non-profits, the AIA provides some provisions that favor these institutions. Collectively, these provisions will affect several core functions of technology transfer offices (TTOs), such as recordkeeping, docketing, management of formal papers and budgeting. Investigator recordkeeping, such as in the form of lab notebooks, retains value because a first-inventor-to-file patenting system is not a first-to-file system. In requiring that the patentee be both an inventor and the first in any line of inventors, the AIA introduces derivation proceedings, where thorough, dated and witnessed lab notebooks and other source materials could provide critical evidence. Docketing functions will need to accommodate the one-year period permitted for inventor publications prior to filing and the one-year pre-filing period needed to establish a commercial use defense to infringement. Management of formal papers associated with patent applications may be simplified as the AIA appears to be collapsing inventor declarations into assignment documents, but clarification of relevant AIA provisions is required. Finally, technology transfer budgets will be affected by creation of the micro entity status applicable to all accredited universities, which will result in a 75% reduction in most patent fees once the USPTO exercises its fee-setting authority. Gaining familiarity with these provisions now will maximize the benefits reaped from the AIA while minimizing the pain of adjusting to it.