Fast Times at Johns Hopkins Technology Transfer: Responding to the America Invents Act in a University Setting

Patent practitioners across the country are scrambling to figure out how best to respond to and work with the changes to the patent laws resulting from the America Invents Act (AIA). This could not be more true for the already fast-paced world of university technology transfer. The directors, intellectual property managers, and patent counsel at Johns Hopkins Technology Transfer (JHTT) have been working to educate faculty inventors and to modify our practices to comply with the rule changes.

First-Inventor-to-File

One of the major changes brought about by the AIA, and the one with the most effect on JHTT, is the move from the first-to-invent system to the first-inventor-to-file system. JHTT receives over 400 reports of invention each year from faculty, staff, and students. Under the first-to-invent system, each disclosure had to be analyzed quickly and a filing made to protect foreign rights, before any public disclosures were made. This task was especially challenging, considering the impetus for professors, researchers, and students to publish and present on their work. JHU often received disclosures days or even hours before a public disclosure was made. These last-minute disclosures often resulted in filing cover-page provisional applications. With the impending implementation of first-inventor-to-file, decisions must be made even more quickly, not only in light of the inventor’s publication and presentation schedule, but also in light of the race to the patent office.

Provisionals

Traditionally, JHTT has filed provisional patent applications, as placeholders in the U.S. Patent Office (USPTO), particularly in cases where there is an upcoming public disclosure, and speed is of the essence. In the past, these provisional patent applications were little more than “cover-page” applications that included a very brief description of the invention and any data or publication draft that was available. These provisionals were filed, because the USPTO would use the provisional application filing as the first or priority filing date for Patent Cooperation Treaty (PCT) or U.S. Utility applications filed within 12 months of the provisional filing date.

With first-inventor-to-file fast approaching, and along with it, the requirement that a provisional be enabling in order to claim priority, creating a new provisional policy was job one in determining a post-AIA strategy for JHTT. Beginning March 16, 2013, filing of a “cover page” provisional application will not result in receipt of an early filing date for priority purposes. If a cover page provisional is filed and 12 months later a PCT or U.S. Utility application is filed, USPTO actions have indicated that the priority or earliest filing date awarded will be the filing date of the PCT or U.S. Utility application. The first or provisional year will be lost unless the provisional application provides sufficient written description and enablement, which is uncommon in a “cover-page” provisional application. Under the new regime, in order to get priority to the earliest or provisional filing date, the USPTO will require the provisional application disclosure to describe and enable the full scope of the later claimed invention.

Even before the March 16 implementation of first-inventor-to-file, JHTT has received several rejections of priority claims based on “cover sheet” provisionals. In many cases where a priority claim is rejected, the USPTO also issued rejections of the claims based on prior art falling between the filing date of the provisional and the filing date of the PCT or U.S. Utility application. Therefore, JHTT began the process of eliminating the practice of filing “cover-sheet” provisionals nearly a year before implementation of first-inventor-to-file. Each provisional now is drafted with enablement in mind and includes at least a partial set of claims directed to the invention. However, given budgetary limitations, filing such robust provisional applications means that decisions as to what to file and what not to file must be made earlier in the life of the invention. To this end, underdeveloped reports of invention are sent back to inventors with more frequency for further detail and/or additional research and development. In addition, it has become impossible for JHTT to react quickly, i.e., within hours, by filing a provisional application quickly after receiving a last-minute notice of impending publication.

Public Disclosure and the Redefinition of Prior Art

Under first-to-invent, JHU inventors had a one-year grace period after a public disclosure to file a patent application describing their invention. As a university where faculty success often is measured by frequency of publication, JHTT routinely made use of the available grace period. Within the one-year grace period, the new invention remained patentable to the inventor regardless of who made the public disclosure. Therefore, even when JHTT was not able to file an application before disclosure, all was not lost.

Starting with the implementation of first-inventor-to-file, the one-year grace period only protects disclosures made by or derived from the inventor. Everything else that occurs during the one-year grace period will destroy patentability. This change applies to public disclosures (publications or presentations), public use, or sale anywhere in the world. Thus, starting on March 16, acts of an unrelated third party can destroy the patentability of an invention.

An unfortunate consequence of the grace period providing protection only for disclosures made by or derived from the inventor is that, in some cases, publications resulting from research collaborations can cause the loss of patent rights for our inventors. For instance, if a collaborator discloses an invention that is not theirs, but instead belongs to a Johns Hopkins inventor, the Johns Hopkins inventor then must be able to prove that the invention was derived from his or her work at Johns Hopkins. Therefore, it is becoming even more important for inventors to keep good records of conversations or meetings with collaborators. Additionally, lab notebook habits can be critical to ensuring protection for JHU inventions. Well-established researchers who have students performing much of the actual experimental work often do not keep lab notebooks, because they are not carrying out the experiments. However, it is now even more important that these researchers create a record of their ideas and activities, in case proof of contribution to an invention needs to be established. JHTT is working tirelessly to make JHU inventors aware of these changes in the law.

Benefits of the AIA for JHTT

Filing as Applicant

One benefit of the AIA for a university technology transfer office like JHTT is the ability to file and prosecute patent applications as the applicant. Some of the associated rule changes include an applicant’s ability to delay filing of the oath and declaration until the application is in condition for allowance and the applicant’s ability to file a power of attorney for a patent or patent application without the signature of the inventor. These changes improve JHTT’s ability to protect JHU inventors without worrying about whether the inventor remains at JHU.

Filing as Applicant: Oath and Declaration

Although JHTT does not plan on delaying the filing of the oath and declaration in most cases, this rule change could prove beneficial to the office in cases where an inventor is unavailable to sign for an extended period of time. Such an inventor absence is not altogether uncommon in a university setting, where an inventor may be doing research or clinical outreach in a remote location.

Filing as Applicant: Power of Attorney

The ability to file a power of attorney form as the applicant also is beneficial in cases where JHTT has not yet received a formal assignment from the inventors or the inventors are unavailable to sign a power of attorney form. However, proving that the AIA affects even the most mundane of patenting tasks, the USPTO has modified its power of attorney forms. The USPTO power of attorney forms grant a broad and general power of attorney, which can be modified for the specific patent or patent application by the transmittal form. Given the large number of patent cases JHTT is responsible for, in addition to the high percentage of those cases that are farmed out to outside counsel for prosecution, JHU prefers to give its prosecuting attorneys only a specific power of attorney for each application they prosecute. Therefore, JHTT modified the USPTO forms to include a specific patent or patent application number directly on the power of attorney form, converting the patent office’s general power into the specific power that JHU prefers. So far, JHTT’s specific power of attorney form has been accepted by the USPTO.

Microentity Status

Another benefit of the AIA is the eventual availability of a further discount over small entity status for those that qualify as a microentity. Universities fall under the definition of microentity provided in the AIA. The USPTO only recently finalized its new microentity rules, which JHTT now will have to study. Meanwhile, those that qualify for microentity status will enjoy a 75 percent discount on USPTO fees for many services. In these times, when all of us must be cognizant of our expenditures, and JHTT is experiencing significant growth in disclosures, these savings are critical to JHTT.

Counseling Inventors

While JHTT can adopt new AIA-related policies, the office still needs the assistance of the inventors to actually make these policies work. JHTT currently is working to educate inventors about the AIA and the office’s policy changes through outreach programs and online educational opportunities. For instance, town hall meetings and visiting inventor labs are being held to present information on the AIA and to field inventor questions. Additionally, information and videos about the AIA and its potential effects on inventors is being posted on the JHTT webpage. This online information is easily accessible to inventors, especially when they are making new invention disclosures using the JHTT webpage.

Another useful inventor counseling procedure triggered when an inventor submits a report of invention to JHTT is that an intellectual property manager (IPM) meets with each inventor to discuss their invention. During this meeting, the IPM is able to determine the key features of the inventions to be included in the disclosure and the claims, in order to draft the most robust provisional possible. The IPM also has the opportunity to discuss any upcoming public disclosures with the inventor, so that if the decision to move forward with the case is made, it hopefully can be done well in advance of the scheduled public disclosure. These meetings also provide a venue where JHTT can stress again the importance of keeping good records of conversations and information related to the invention.

The extent of the effects of the AIA will not be known until it is fully implemented on March 16. Until then, JHTT continues to prepare by identifying applications that would benefit from filing before the March 16 change to the first-inventor-to-file system and providing educational resources to JHU inventors.