The independent news organization of Duke University

Obama bill to overhaul patent system

Getting a patent is about to get a lot easier.

Some Duke researchers expressed excitement surrounding the recently approved overhaul of the U.S. patent system. President Barack Obama signed Sept. 16 the America Invents Act into law—a patent bill that will substantially change the system for the first time in 59 years. Proponents argue that the change is long overdue, and filing for a patent will now be less time-consuming.

“[The bill] is a vital step in increasing U.S. competitiveness abroad,” said Elvin R. Latty Professor of Law Arti Rai, who specializes in patent law and innovation policy at Duke.

She noted that patent reform legislation is important because it will make the U.S. patent system a more effective engine for innovation. Specifically, the legislation will help reduce a backlog of more than 700,000 patent applications.

In fiscal year 2009-2010, which ended June 30, 2010, Duke researchers were issued 91 patents and filed 189 patents, according to a Duke news release Sept. 16.

The prolonged wait time for patent approval can create notable uncertainty for innovators, including researchers at Duke.

Eric Wagner, associate director of Duke’s Office of Licensing and Ventures and patent attorney, works as an in-house patent counsel at the Duke patent office, helping researchers and inventors to file patents.

“Patent reform will help everyone from a university and small business standpoint,” Wagner said. “For Duke inventors, the patent reform will ensure that quicker, more quality patents will come out of the office.”

Of the changes the legislation makes, Wagner noted the transition from a “first to invent” to a “first to file” system is the most significant for Duke innovators. This change means that patents will be awarded based on the date they were filed and not on the date that inventions were created, which Wagner said will put Duke and other universities on a more equal playing field with the rest of the world.

“Everything now is based on file date and the patent office will draw a clear line in the sand as to what that means,” he said.

Because of this change, Wagner noted that it will be important for inventors at Duke to work with the patent office more quickly when filing applications. He said, however, that the University is prepared for the change.

“Duke researchers and inventors have anticipated this for a while,” he said. “The patent office at Duke has been actively involved with professors.”

Philip Benfey, Paul Kramer professor of biology and director of the Center for Systems Biology in the Duke Institute for Genome Sciences and Policy, has applied for a patent on a method for regulating biomass in energy crops. He said he is not worried about any changes the act may create.

“I don’t see [the bill] as having a major impact,” Kramer said. “It will relieve the necessity of keeping detailed records to prove when an invention was made.”

Wagner said inventors who are unfamiliar with the process should talk to the patent office to ensure that they understand the changes. Researchers at Duke need to engage with the patent office earlier and more frequently now that this legislation has passed, he added.

At the same time, Wagner said the patent laws may have made certain issues worse for scientists. He added that many innovators are uncertain about the bill’s logistics.

“[Some inventors] aren’t exactly sure when their concept for an invention materializes into what is considered an actual invention by the patent office,” he said.

Ultimately, Wagner said he believes that the bill’s overall effect will be positive.

“Universities like Duke, which serve as the bedrock for our nation’s competitiveness, will look back at this legislation as being a cornerstone in changes in the research process,” he said. “We will see some great results.”

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