Tucson tech: '1st-to-file' patent law holds risks, benefit for area research

2011-10-18T00:00:00Z 2014-07-02T12:38:50Z Tucson tech: '1st-to-file' patent law holds risks, benefit for area researchDavid Wichner Arizona Daily Star Arizona Daily Star
October 18, 2011 12:00 am  • 

The recently passed patent-reform law is supposed to bring the United States in line with other nations and improve the patent process overall.

The changes are of particular interest in Tucson, where the University of Arizona and big tech companies like IBM and Raytheon are major patent filers.

The biggest change under the so-called America Invents Act - signed into law in mid-September - is a shift to a so-called "first-to-file" system, which grants patent rights to the first one to file with the U.S. Patent and Trademark Office.

That change - which goes into effect March 16, 2013 - will bring the U.S. in line with most other nations.

Current U.S. patent law follows a "first-to-invent" model, which allows inventors patent rights if they can prove they came up with an idea first, no matter when they file a patent application.

The present law allows for a kind of "grace period" during which inventors can file for a patent up to a year after disclosing their idea publicly through scholarly articles and such. But such disclosures of "prior art" by others also can be used as grounds against issuing a patent.

Under the new law, a person filing for a patent still has a grace period for disclosures, but subsequent disclosures by others can't be used to derail a patent.

"The first-to-file system has its risks, if you're slow to the chase, but it also has a lot of certainty, because your (filing) date is your date," said Sue Chetlin, a patent lawyer and director with Fennemore Craig in Phoenix.

"There will still be plenty of emphasis on filing early, regardless of your own disclosures, because you don't know what other people are working on and what's out there that can be used against you," she said.

The change to first-to-file is not expected to hurt the UA, said Patrick Jones, director of the UA Office of Technology Transfer.

"Basically, we've been operating on that (first-to-file) basis, because if we want foreign rights, most countries are first-to-file," said Jones, who helped higher-ed groups including the Association of Public and Land Grant Universities formulate comments on the America Invents Act.

UA faculty are still able to write and talk about their work, but if such disclosures include patentable material, chances are the UA has filed at least a provisional U.S. patent application, Jones said.

Jones' office has been busy in the past year. The UA received 19 U.S. patents in the 2011 fiscal year ended Sept. 30, up from 13 in the prior year, Jones said.

The UA has 169 active U.S. patents, 78 pending applications and 84 provisional patent applications within their one-year validity period. The school also has 22 foreign patents pending under the Patent Cooperation Treaty, which must be converted to patent applications within 30 months of first filing, Jones said.

The good thing about the first-to-file system, Jones said, is that it eliminates so called "interference" proceedings, in which parties can win patent rights from a rival filer if they can prove they invented something first.

Such legal proceedings, presided over by a patent board and appealable in civil court, are costly and complex, Chetlin said.

But the law provides new procedures for challenging issued patents.

A new "derivative proceeding" allows patent challenges on the basis that they are simply derived from an earlier patent. Another new procedure allows a party to challenge a patent via a process called "post-grant review."

Critics including groups representing individual inventors say those provisions favor deep-pocketed corporations.

Congress did make a small nod to small patent filers.

While the patent-reform law raises patent fees by 15 percent, it also created a fee category for "micro entities" that will pay 25 percent of the full fees paid by large filers.

Much of the impact of the new law - including the requirements for a micro-entity - remains to be seen and will be shaped by Patent Office rules and subsequent rulings by courts, Jones and Chetlin said.

If the new law shortens the patenting process or raises the bar on patent quality, it will benefit the UA and other universities, Jones said.

"The time between filing and issuing, or getting any kind of response, has gotten so long that it's actually detrimental to what universities do," he said.

Contact Assistant Business Editor David Wichner at dwichner@azstarnet.com or 573-4181.

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