Patent Law Revisions to Impact GU Inventors

The Office of Technology Commercialization is preparing students and faculty inventors for patent changes set to take effect in March.

The changes, part of the America Invents Act of 2011, focus primarily on the issue of ownership. As of March 16, the United States will become a “first inventor to file” country.

Until now, the U.S. has been a “first to invent” country, meaning that if two inventors file a patent on the same invention, the patent office will review the patent to see which inventor had first conceived the invention and was able to practice it through means such as conducting trials.

Under the new system, the first person to physically file the patent will be considered its inventor, encouraging patents to be filed much earlier than before.

The OTC issued a statement earlier this week urging all current and prospective inventors to submit any outstanding patent applications as soon as possible in order to beat the March 16 deadline.

“Since the current patent rules favor universities, where the invention disclosure and patenting process can take some time, and gives us the opportunity to try to prove our inventors were the first to make the invention, we are trying to file patent applications on inventions under the existing rules,” Claudia Stewart, vice-president for technology commercialization, said.

While the office does have some undergraduate patents, the large majority of patent-holders are graduate students and faculty members.

Sivanesan Dakshanamurthy, an assistant professor of oncology at the Georgetown School of Medicine, holds several patents with the university for anti-cancer treatments that he has invented. He does not, however, feel that the new system will have much impact on his work.

The OTC will hold a seminar Feb. 27 that will focus on the recent changes to patent law as well as the new online invention disclosure forms that the office is releasing.

These new forms, geared towards inventors as well as prospective inventors, will expedite the legal processes involved with patents.

“[The new form] is attached to my office’s database where we manage all of the intellectual property. Faculty will be able to disclose [their inventions] immediately to our office and be able to follow the progress of their patents,” Stewart said.

Dakshanamurthy believes that the new online database will have a greater impact on his day-to-day work than the switch to a first-inventor-to-file system.

“I don’t think I will be affected by this new system,” Dakshanamurthy said. “But I do like the new online disclosure system going into effect soon. It will help me find inventions quickly.”