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TTO Update

By Rita Yusko

Patent Reform: Implications to the University Researcher

Effective March 16, 2013, the United States Patent Office switched from a “first-to-invent” system to a “first-to-file” system to determine inventorship of competing technologies.  Provisions of the new patent reform, known as the American Invents Act (AIA), make it even more important to have patent protection in place before publication and public disclosure of intellectual innovations.  Under the old “first-to-invent” system, patent rights were granted to the inventor who first conceived and reduced the technology or invention to practice. Under the new “first-to-file” system, patent rights are granted to the first person who files a patent application for an invention. It is now the first person who files for protection who will be granted patent rights.

This “race to file” means that delaying disclosures to the NIU Technology Transfer Office (TTO) and subsequently, in filing a patent application to the U.S. Patent Office can result in a forfeiting of patent rights.  Furthermore, a delay in disclosing and filing means that another researcher filing a patent application on the same technology may be granted patent rights even if they were not the first to conceive of the invention.

NIU researchers should be aware that under the new patent law, public disclosure of your invention by a third party (e.g. peers, students) prior to filing a patent application can result in a loss of filing rights because the subject matter is no longer considered novel and novelty is a criteria for patentability. For example, if you discuss the invention with someone (with or without a nondisclosure agreement) and that person discloses your invention publicly, it could undermine your patent rights by removing novelty and becoming prior art.  In light of this new law, NIU researchers are strongly encouraged to disclose inventions to the NIU TTO as early as possible and preferably, prior to public disclosure (e.g. presenting the idea at a professional conference or submitting for publishing to a journal). While there is a one-year grace period for your own public disclosure for filing, the possibility exists that a competitor may develop and publicly disclose an improvement over your invention, for which your invention would prior art, thereby removing your patent rights to your invention.

Please contact the TTO for additional information on the new patent reform or for any other questions related to patent protection. The TTO assists NIU investigators with Intellectual Property (IP) protections and commercialization of technologies.

Rita Yusko, Technology Transfer Manager
Staci Gorksi, Technology Transfer Intern
tto@niu.edu  
(815) 753-2117