Changes to U.S. Patent Law and What It Means for MSU

Implementation of the Leahy-Smith America Invents Act

The U.S. patent system has granted patents to the person who could substantiate that they were the “first to invent.” Fairly liberal mechanisms existed that created a “grace period” allowing inventors to receive patents from applications filed up to 12 months after public disclosure of their invention.

The recently enacted law will soon shift the U.S. patent system to a “first-to-file” system, more closely aligned to the patent practices in the rest of the world. In many foreign jurisdictions, any public disclosure prior to the filing of a patent application renders the invention unpatentable. The new patent law brings the U.S. very close to this situation.

Public Disclosure May Negate Patent Rights

A long-standing requirement in U.S. patent law is that inventions must be “novel,” meaning the claimed invention must be different from what has already been discovered, invented, published, sold, or previously known or used by another (referred to in patent law as “prior art”). Under the new law, this requirement will be more strictly enforced with respect to “public disclosures,” so that any information that is available to the public prior to the filing date of the application is considered prior art.

What is a Public Disclosure?

A “disclosure” may include written documents (e.g., manuscripts, book chapters, theses, journal articles, posters, abstracts, grant proposals, etc.), oral communications (e.g., thesis defenses, seminars, or meetings), public use of research materials and prototypes, or sale or offer for sale of research materials and prototypes.

Presentations to fellow MSU researchers and students are generally not considered “public” disclosures, as long as the session is not open to the public or to visitors from any companies or other institutions. Discussing your invention with a researcher at another university or a representative of a corporation may be considered a public disclosure, depending on what information is shared.

Exceptions for Public Disclosures are Risky and Narrow

While some narrow exceptions exist in the new patent law regarding public disclosures by inventors of their own work, they are complex and it is unclear how the new law will be interpreted and applied by the USPTO.

These exceptions may not protect against third-party disclosures becoming prior art and, therefore, are risky to rely on. It is also possible that a person could file a patent application based largely on your public disclosure, and even if you could prove that fact, your rights in a subsequent patent application may be diminished. To preserve patent rights, researchers must act with an abundance of caution and discuss all disclosures with MSUT staff prior to any disclosure events.

Protecting Your Invention under the New System

To preserve patentability of an invention that you intend to disclose (i.e., give a public seminar, submit work for publication, etc.), it is imperative that you notify your technology manager as far in advance as possible. Prompt disclosure is also required to comply with MSU policies and may be required by third-party contractual obligations.

Your technology manager can provide guidance on the best means to protect your invention. The following approaches, which are managed by MSUT, can be used to facilitate the proposed activity without compromising patentability:

  • filing a patent application
  • executing a confidential disclosure agreement (CDA)
  • executing a material transfer agreement (MTA)

 

While sending research materials, prototypes, or invention data to others outside MSU can be considered a public disclosure, doing so under the protection of a CDA or MTA with MSUT’s assistance can prevent a public disclosure from occurring and preserve patentability of your invention.

Submitting Your Invention Disclosure

Disclose your invention to MSUT by completing and filing an invention disclosure form.