Inventors Must Act Fast Under New “First to File” Provision

Research universities scramble to alert students and staff about a March 16 change in patent law.

By: Marisa M. Kashino

Attention inventors: If you’ve got a new creation you’ve been keeping to yourself, you should file a patent application for it now. That’s the word that Washington research universities are trying to spread to their faculty and students.

A key provision of 2011 patent reform legislation goes into effect on March 16. On that date, the US changes from a “first to invent” to a “first to file” country. Under the old rules, people who invented something first, but were beaten to filing for US patents on their inventions had the ability to argue for the record to be corrected. After March 16, inventors who find themselves in that situation will be out of luck.

The nation’s roughly 250 research universities all have offices with the sole purpose of commercializing faculty- and student-produced inventions and making them available for the public’s benefit. Claudia Stewart, vice president of Georgetown University’s Office of Technology Commercialization, e-mailed a memo to students earlier this week advising them to be mindful of the looming “first to file” change.

“If you have—or expect to have soon—a new invention, it is most prudent for you to disclose it to the Office of Technology Commercialization immediately,” she wrote. She also advised that the weeks before the deadline “may be a very busy time for the office.”

Steven Kubisen, a consultant to George Washington University’s Office of Technology Transfer, notes that the United States is falling in line with rest of the world, since other countries have long operated under “first to file” laws. This meant that American inventors who dragged their feet on filing in the US often lost the rights to their inventions in foreign countries, but were still able to maintain the rights in the US.

But Kubisen says losing a claim on an invention overseas isn’t as big of a deal as losing it in the US: “As far as intellectual property is concerned, the best market is the United States, so this change is important. If you lose the ability to protect your intellectual property in the US market, you lose a lot.”

Washington-area universities have been responsible for some pretty cool creations. One recent invention from a GW School of Public Health faculty member is software technology that helps people quit smoking by giving them automatic personal reminders to keep them on track to beat the addiction.