Universities Take Note: The America Invents Act Could Destroy Your Patent Portfolio

[Link: AIA Impact on University Innovation and Tech Transfer – Sterne, Kessler, Goldstein & Fox P.L.L.C.]

IP lawyer Robert Sterne at Sterne, Kessler, Goldstein & Fox has a message for universities and technology centers that generate revenue from patent portfolios built around R&D: the America Invents Act (AIA) changes everything. And not in a particularly good way…

In the above video, Sterne lays out the principle challenges the new law brings to research universities, which include:

  • First-to-file means that schools that wait until commercial interest has been generated in R&D before filing patents risk losing IP rights on those developments
  • Filing first (“early and often”) will require a significantly greater investment in unproven technology, so universities should create funds for bankrolling new patent filings
  •  The AIA’s new contested proceedings that went into effect in September 2012 are very costly, and if not carefully defended could destroy a patent portfolio

Sterne’s recommendation:

“Universities … need to do a top-to-bottom review of their strategy, tactics, and their business model to take advantage of the new developments that have occurred in the patent landscape under the America Invents Act.”

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