Patent reform may benefit Penn researchers

The United States is supporting university-based research and innovation through the single biggest reform in patent law in over 50 years and Penn hopes to benefit.

Last Friday, President Barack Obama signed into law the America Invents Act, a patent reform bill designed to help American businesses, entrepreneurs and researchers turn ideas into products faster in order to promote job creation.

The act will implement sweeping changes to the United States’ patent law over the next 18 months, aimed at making patent processing more efficient and reducing unnecessarily litigation.

The most drastic change for U.S. patent law is the adoption of a “first-to-file” policy, granting patent rights to the first person to file for protection of an invention. The U.S. previously operated under a “first-to-invent” policy that instead granted rights to the person able to prove that they conceived and tested an idea first. The U.S. Patent and Trademark Office will also begin to offer a 12-month fast-track option, as well as a nine-month window for challenging a patent for any reason.

Researchers at the Perelman School of Medicine could benefit from the move to “first-to-file,” according to Pharmacology professor John Hogenesch. “First-to-file could be moderately beneficial to the drug discovery process for several reasons,” Hogenesch wrote in an email. “It should speed up disclosure of inventions and get the information out there to the research community.” Hogenesch also added, “it brings the U.S. in accord with how the rest of the world deals with patents.”

“It’s a good idea in theory, but a lot of it is in theory,” said Glen Gaulton, professor of Pathology and Laboratory Medicine and Penn Medicine representative for the Provost’s Council on Research.

Although the goal of first-to-file is to reduce patent wait time, the change could actually cause a heavier administrative burden.

“The new proposal is relating more to who gets out there first, and therefore will encourage people to make more disclosures and make more patents,” Gaulton said. This increase in patents could create pressure on Penn’s Center for Technology Transfer, the office responsible for obtaining and managing patents, copyrights and trademarks derived from the University’s research. “The long term impact of the act has yet to be seen,” said Jennifer Langenberger, director of Intellectual Property at the Center for Technology Transfer. The department is currently in the process of analyzing the act over the next several months in order to determine what changes need to be made in the way Penn researchers apply for patents. Most importantly, the center will “evaluate if we need to be more aggressive on filing on early stage technologies,” Langenberger said.

However, it is uncertain whether the act will promote innovation to the extent Obama desires. Reducing patent wait time is “not really attacking the fundamental problems … if you look at what is blocking entrepreneurship, it’s not time to patent,” Gaulton said. “It’s really the availability of funds in the marketplace.”

Researchers at the School of Medicine are feeling the effects of low funding, according to Gaulton. “Research funded by the National Institutes of Health and National Science Foundation has been restricted to the point where most studies have been stalled longer than they used to,” Gaulton said. “A lack of funds to feed research throughout all its phases … that is where the gap really lies.”

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