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New patent law's effects on UNC uncertain

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.

“We need to be timely in reporting inventions,” Innes said.

UNC applies for about 125 new patents each year and currently has about 500 pending, she said.

Innes said legal costs for filing a patent range from $25,000 to $50,000, and the process typically takes three to five years to be approved by the U.S. Patent Office.

Keith Kocis, a UNC researcher, said he attended the event because he has filed two patents and wanted to learn more about the effects of the new legislation.

“It sounds like I need to file (patents) before 2013,” he said.

But he added that the legislation seemed like it will help inventors overall because it brings U.S. law in line with international law.

“It sounds like it’s leveling the playing field around the world,” he said.

Jian Jin, a UNC researcher who attended the event and has filed 41 patents, said the act doesn’t seem like it will change much for him, except with timeliness.

“We will have to file earlier and probably more often,” he said.

Contact the University Editor at university@dailytarheel.com.

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