New act changes US patent laws
The America Invents Act, which will change the patenting system nationwide, could shorten processing time for USF to be granted patents – depending on how much the inventor is willing to pay.
The act was signed by President Barack ObamaSept. 16 and will be effective March 16, 2013.
According to a White House press release, the act will give a boost to American companies and inventors who have suffered costly delays from having to hire lawyers to prove they invented an idea first. It will allow entities to focus on innovation and job creation, according to the release.
On a 2011 Intellectual Property Owners Association’s list, USF ranked No. 9 in number of patents for universities and No. 269 for organizations overall last year.
According to the New York Times, the main change to the U.S. patenting process will be the switch from a “first to invent” system to a “first to file” system, which will establish priority for whoever filed for the patent of an invention first.
The act will allow the USF Division of Patents and Licensing two more options – the fast track and slow track – when filing an application with the U.S. Patent and Trademark Office (USPTO).
The two different tracks would be determined by the amount of money an applicant is willing to spend. Currently, the amounts are unknown, said April Turley, intellectual property manager at USF’s Division of Patents and Licensing.
“If you pay more money, USPTO will accelerate the examination of your application,” Turley said. “If you want to pay less money, you can go on a slow track and delay examination of your application.”
Currently, filing a patent costs $1,000, she said, and once students or faculty file for a patent, they wait “in line” about three years for the USPTO to examine the application.
“As long as our staff is educated in these changes, everything should be fine,” she said.
Even though Obama said the act will help bring these inventions to the market faster and create jobs, Turley said she believes USF will only be affected by the time process for a patent application.
“We are not really anticipating that much of a change on how we operate in our office,” she said.
Terri Hunter, licensing manager in the Division of Patents and Licensing, said the division will continue to work normally and adjust the system when changes are made.
“I don’t think the students at USF are going to feel anything different going through the patent process with our office,” she said. “Our procedures in place will continue to work within those procedures and we will change them accordingly, if need be. But, we still plan to work very closely with our students and faculty to evaluate their inventions and help them through the patent process.”
Students who have pending patents will not be affected by this act, she said.
Hunter said USF received 91 patents in the last fiscal year, but Turley said she does not expect the amount of students wanting to patent or the amount of granted patents to decrease in the upcoming years.
“As long as our faculty is diligent and keeping track of the technology they are working on in their lab, we never thought there would be an issue with getting a patent,” Turley said.
As of now, students and faculty members submitting a patent through USF will not pay for the process, which will remain unchanged under the act.
“If you decide to disclose to our office (the invention) and the University approves it, the University will own your technology,” Turley said. “Our office does pay for the prosecution of the patent application. Then, we try to identify companies to license your technology.”
If an invention is licensed, the inventor who signed the rights to the University receives a portion of the money, based on the negotiations of the agreement, she said.
“Right now, we are working to educate the faculty or student who discloses (ideas) to our office so they understand what the changes are, to make sure their processes are in line with how it’s going to be,” she said.