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Mistake by Congress in AIA puts thousands of university patents at risk


By Jesse Schwartz
Published: May 24th, 2017

A guest column by IP attorney Andrew S. Baluch in the May issue of Technology Transfer Tactics provides an important heads up for TTOs. Due to an acknowledged error in crafting the America Invents Act, universities that filed provisional patent applications in as the assignee, rather than in the name of the actual inventor, could lose their patent entirely, Baluch points out.

This is no small matter, Baluch warns. “In fact, assignee filings have become so popular in the last four years that today over 10,000 U.S. patents have issued just to universities listed as the applicant.”

He continues: “The problem is that Congress forgot about provisional patent applications. Universities routinely file a provisional application in the first instance and then, within one year, file a regular application that claims priority back to the provisional. Congress unfortunately forgot to change part of the old law, which continues to say that a regular application enjoys the filing date of a provisional application only if the regular application was ‘filed by an inventor’ named in the provisional.

Although everyone involved knows there’s a problem, attempts to fix it have been waylaid by the political process since each effort has been attached to another more controversial bill.

“This small distinction may end up making a huge difference. The owners of these patents may lose their ability to rely on their provisional applications, which means that “prior art” published after the provisional but before the regular application might invalidate the patent claims.”

The full article is available in the May issue. To subscribe, CLICK HERE, and also gain access to more than 10 years of archived best practices and success strategies for TTOs.

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