Office of the Vice President for Global Communications

Monday, March 18, 2013

Patent law revision to cause few changes for campus inventors

An important change to the U.S. patent system that took effect over the weekend as part of a larger overhaul aligns it better with systems used in other countries and makes it more predictable.


More information

More detailed analysis of the legislation, including its impact at U-M, can be found at U-M Tech Transfer’s website. People with questions about inventions made at U-M can email, or go to the website.

The new law probably will cause few alterations to U-M’s Office of Tech Transfer patenting operations, said Richard A. Brandon, associate general counsel.

Prior to the change in the law, inventors were motivated to file patent applications early and before they made public disclosures, he said. The new law maintains this motivation and should not mean huge changes for inventors on campus.

“The change in the law should be quite good for the patent system — and probably the technology-based sectors of our economy — because the new law adds a great deal of predictability to the system, and businesses and their investors seek predictability,” Brandon said.

  Richard Brandon

The United States changes to a first-to-file patent system from a first-to-invent system as part of the America Invents Act of 2011. As with other first-to-file systems, the new U.S. system will not permit one to expropriate an inventor’s idea and beat him or her to the patent office. Consequently, the system may be better referred to as a first-inventor-to-file system.

“Although the new system may produce some differing results, in general I look for it to be beneficial for the patent system as a whole,” Brandon said. “It will be much easier for the public to look at a patent and know if it is really valid and enforceable.”

The U.S. has been under a first-to-invent system since the first Patent Act in 1790. Under that system, when two patent applicants each sought a patent on the same invention, in theory a U.S. patent was awarded to the first applicant to have made the invention.

Starting with new applications filed on or after March 16, a patent is to be awarded to the inventor that first files a patent application on a given invention. Thus, in general, an earlier-filed patent application will be “prior art” to later-filed applications, meaning that later-filed applications will have to distinguish over the earlier-filed application.

Under the old system, the U.S. Patent Office would examine an application and then grant a patent, while lurking in the background were potential prior art with unknown effective dates and non-public prior art that the patentee and others would only learn about in later litigation, he said.

While the new system is not perfect, the public should be able to do a better job of searching public databases to find the prior art relating to an invention, and then know with more certainty whether a patent is valid or whether to file a patent application in the first place.

“In theory, this should help businesses and investors better know when to commit to developing an invention, and hopefully engender greater respect for issued patents,” Brandon said.