One of the questions raised by the America Invents Act is how the change from “first to invent” to “first to file” will affect US academic and non-profit institutions. Of specific concern is how this may accelerate the patent application process, increasing responsibility for early identification of disclosures that contain material that may rise to the level of invention, and have patentable value.
While academic and non-profit institutions already operate under “first to file” in other countries, this would represent a cultural shift for many US institutions, leading to some level of uncertainty:
- At what point should TTOs / TCOs engage researchers to identify early stage technologies?
- How do institutions with smaller patent budgets respond to the push for earlier filing dates?
- What would potential challenges to the law mean for ownership and licensing of patents?
- How do institutions alleviate the concerns of researchers with respect to the handling of intellectual property?
Establishing a change management plan to address these issues will help mitigate the uncertainty, allowing researchers and administrators to focus on their responsibilities, even if elements of the plan never need to be enacted.