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Earlier this year (see ACA Newsletter - Education Europe, March 2011), the US Senate passed a version of the America Invents Act, legislation designed to introduce key changes into the country’s patent review and issuing processes. It took several more months (following what the White House characterises as “nearly a decade of legislative efforts”), but a final version of the bill approved by both houses of the US Congress was signed into law by President Obama on 16 September 2011. As a result, the United States is now set to conform to the practice seen widely around the world of prioritising patent applications on the basis of “first to file” rather than “first to invent”. Why is this controversial?
The debate around how best to prioritise applications has turned on issues of equity versus efficiency, collaboration versus competitiveness, and job creation. Supporters of the “first to invent” approach argue that individual inventors should not be placed on an uneven playing field with large corporations fielding armies of patent lawyers skilled at negotiating the patent application process. Furthermore, they argue that small businesses in the US are responsible for generating a great deal of employment. So, to privilege larger corporations under a “first to file” regime undermines innovation and job creation in innovative start-ups, for example, which are often spun out of universities. And finally, the rush to file first may discourage innovative academics from collaborating more slowly, thoughtfully and openly over time. On the other side of the issue, supporters of the “first to file” approach insist that this standard allows for a crystal-clear prioritising of applications, and therefore (along with additional funding) should better position the US Patent and Trademark Office (USPTO) to fulfill its obligations more efficiently—a key concern in an era of intense global competition, rapidly evolving technological developments, and the fact that the USPTO currently has a backlog of some 700 000 patent applications.
Along with other key stakeholder groups, the academic community in the United States was somewhat divided on this issue. One the one hand, many of the major associations of research universities and medical schools applauded the legislation’s passage. Others – such as the Wisconsin Alumni Research Foundation (WARF) – have worried openly that the new law will “weaken our patent system to the disadvantage of innovators and especially university innovators”. The WARF has even gone so far as to question the constitutionality of the legislation. For now, though, the new law stands.White House Association of American Universities Wisconsin Alumni Research Foundation (WARF)