Patent law gained its first significant revision in 50 years last September, but Mitch Bigel, a patent attorney who has been in the field for 30 years, isn’t sure how it’s going to help UNC researchers.
UNC currently owns about 500 U.S. patents and another 1,000 international patents, bringing in about $3 million annually, said Cathy Innes, director of the Office of Technology Development, which files patents on behalf of the University.
Bigel presented to about 80 researchers and business professionals Thursday night about the changes the America Invents Act are making in the U.S. patent system, as part of the monthly Carolina Innovations Seminar.
The act’s main changes will go into effect in March of 2013.
The act’s biggest change is a shift away from “first to invent,” which means if two people try to patent the same innovation at the same time, whoever can prove they began working on the innovation first would get the patent, Bigel said.
He added that the act updates U.S. law to be in line with the rest of the world’s “first to file” system, meaning the patent is awarded to the first person to file with the U.S. Patent Office, regardless of when they began working on the invention.
“Everything says if you’re working on a patent application, file it before that date,” Bigel said.
He said researchers should now consider submitting a provisional application, which establishes the filer’s claim and gives them a year to file for a regular patent, drawing a “line in the sand” to defend their innovation.
Innes said the process for submitting an innovation to her office will not change for UNC researchers. But the office will focus on filing more complete provisional applications, she added.