New patent act promotes product-focused research

President Barack Obama signed a new patent act into law Sept. 16 to speed up the commercialization of university research findings, part of a broader effort to encourage cutting-edge scientific work across the nation.

In the most significant change to the U.S. patent system since 1952, the America Invents Act calls on inventors to file for patent protection much earlier in the research process, eliminating the one-year grace period of the current law. Bringing the U.S. up to par with international patent standards, the law puts extra pressure on researchers to publish findings quickly to protect intellectual property rights.

After the Senate voted overwhelmingly in support of the bill in March, the House of Representatives passed their version of the bill in June. The White House touted the new research commercialization efforts as part of a national initiative to create jobs.

The University reserves all rights to studies conducted on campus, and research at GW has commonly been prioritized toward academic purposes, rather than commercial motives.

Jim Chung, director of the Office of Entrepreneurship, declined to provide the number of patents GW holds, saying the information is confidential. A University spokesperson also declined to comment on the amount GW makes from its patents and examples of current patents.

Charanjeet Guron, the associate director of the GW’s Office of Technology Transfer, said the biggest effect of the new act for universities nationwide – as well as small businesses and individual inventors – is researchers must file a patent application before disclosing an invention to the public.

“The take-home message for our researchers and others involved in intellectual exercise at GW is that patent protection cannot be an ‘afterthought’ to publication or public disclosure,” Guron said.

The Office of Technology Transfer evaluates the University’s inventions for commercial prospects, pursues patent protection for the most promising ones, markets them to potential licensees and negotiates the licenses.

Under the rules of international patent protection, the office often already files patent applications before public disclosure. The new law, however, will make the “first to file” standard a requirement, not just a preference.

While the vast majority of university research does not result in patent applications, Guron added that “applying for patent protection does not mean that GW’s research findings that are patent pending cannot be published in research journals, or made available at other universities.”

The new federal law includes a “post grant review” clause that allows other parties to challenge patents issued after Sept. 16, 2012. Though the details haven’t been finalized, the review function forces researchers to patent products with an eye toward future pushback in an effort to improve patent quality.

To accommodate with these new changes, the Office of Technology Transfer will hold an “inventor education” workshop in the coming months with patent attorneys as guests to educate researchers on the new patent law.

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