Universities spar with administration over patent regulation

Signed into law in 2011, the Leahy-Smith America Invents Act is the first sweeping reform of the patent system in 60 years. Research-focused university associations take issue with a small portion of a provision that changes a decades-old “first-to-invent” standard to a “first-to-file” standard, and met with administration officials last month to discuss the proposed regulations.

Education groups mentioned lobbying against the “first-to-file” provision, but say they compromised during the legislative process in order to keep intact a rule that gives an inventor 12 months to talk or write publicly about his or her ideas before submitting them for a patent. 

According to documents related to the meeting, the U.S. Patent and Trade Office wants to curtail the so-called grace period.

“The proposal not only amounts to an inappropriate interpretation of the [America Invents Act], it also could be construed as an invitation to ‘scam’ or defraud the proposed regulatory structure with regard to the grace period and the exceptions under the noted sections,” wrote Carl E. Gulbrandsen, the managing director of WARF, the University of Wisconsin Alumni Research Foundation, in a letter to the Patent and Trade Office. Universities, he continues, thrive on early publishing of research results — and allowing access to those results. 

“A third party [can] access and scan early publications, modify it or them by introducing minor variations and, in turn, publish the variation ... and thereby destroy the opportunity for the university to utilize the intended grace period exception,” Gulbrandsen wrote.

P. Martin Simpson Jr., the managing counsel for the Regents of the University of California, says the narrow window proposed by the Patent and Trade Office curtails the amount of investment funding a small business or researcher could receive — specifically, he mentions, by discussing the idea at trade shows — before it is submitted for a patent.

"The publish-or-perish environment of universities means university inventions are usually disclosed to the public as well; thus, such university inventions would be similarly impaired by the [Patent and Trade Office’s] very narrow interpretation of the American grace period," Simpson wrote to the Office of Information and Regulatory Affairs (OIRA).

Officials in the White House, OIRA, the Small Business Administration and the Patent and Trade Office met with representatives from the Association of American Universities, the American Council on Education, Association of American Medical Colleges, the Regents of the University of California, a UC San Diego-based business group called CONNECT and WARF. They argued that regulators are deviating from Congress's intent by changing the factors of the “first to file” provisions, which go into effect March 16.

According to statistics kept by the Patent and Trade Office, the University of California held the most patents out of all U.S. universities in a single year, with 390 in 2005 — the last year the agency has on record. Massachusetts Institute of Technology was a distant second, with 136.