Recent Changes in Patent Law

The recent enactment of the Leahy-Smith America Invents Act (signed into law on 2011 Sept 16) makes this a good time to review patents, and why they are important to chemists. While the vast majority of chemists in industry are quite familiar with the various types of intellectual property (patents, trademarks and copyrights), others are not always so well-versed. 

Basically, when you invent a new widget (drug, product, etc.), you can apply to the United States Patent and Trademark Office (USPTO) for a patent.  If granted, this gives you the right to “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a limited time in exchange for public disclosure of the invention when the patent is granted.”  The USPTO patent examiner reviews your application to ensure that the invention is novel, useful, and non-obvious to one skilled in the art.  They also check to make sure that the idea has not been previously disclosed publically.  Because of the large backlog, it currently takes about 3 years to get a ruling. 

One of the consequences of this system is that companies become very concerned about information security.  If anyone at the company discloses information about the invention before the patent is filed, this can result in the application being denied.  In addition, it requires industrial chemists to maintain meticulous laboratory notebooks, regularly witnessed by others who understand, but are not part of, the work being patented.

One of the most significant changes in this Act was to change the United States from a “First to Invent” system to a “First Inventor to File” system.  This means that instead of proving when you came up with the idea, you only have to prove that you came up with it (that you are an inventor) and then be the first to file an application with the USPTO.  This is much easier to prove, and hopefully will reduce litigation over inventorship priority.  It also puts the United States in line with the rest of the world, most of which already use First to File systems. 

Another issue being addressed is that of fees.  Currently fees collected by the USPTO are redirected into the Treasury department’s general fund, from which Congress appropriates money to the USPTO. The fees collected by the USPTO were meant to cover the operating expenses of the agency.  However, with Uncle Sam taking a cut off the top, USPTO plans for expansion in response to increasing backlogs have been put on hold.  The new act will release these funds back to the USPTO. While the details have not yet been worked out, it is hoped that this release of revenues will allow the USPTO to hire many more examiners, and possibly open satellite offices, thus reducing the backlog of patent applications and allowing careers in patent examination for scientists who live outside of Washington DC.  

While changes in patent law may not affect the daily life of the bench chemist, shifts in philosophy over time will have an impact on companies intellectual property strategies, which will affect how chemists work. 

For more information, see Chemical and Engineering News, 2011 Oct 10, pages 36-37, and  What Every Chemist Should Know About Patents.  

This article was written by Lisa M. Balbes, Ph.D. of Balbes Consultants LLC.  Lisa is a technical writer/editor and author of: “Nontraditional Careers for Chemists,” published by Oxford University Press.