U.S. Patent Reform: Act Incents Smaller Firms to Innovate

By Jasmeet Duggal

On September 16th, the America Invents Act was signed into law in the United States. Under the Act, the patent filing system has changed from “first-to-invent” to “first-to-file.”  This allows the first inventor to file for a patent to receive the rights to the invention. Once implemented, it is intended that the Act will get rid of unnecessary patents, accelerate innovation, and create new job.

Any successful inventor knows the importance of protecting his intellectual property (IP). Large companies are well equipped with in-house teams of lawyers to take advantage of the “first-to-file” strategy. Smaller firms are not only challenged with financing their day-to-day operations, but also worry about protecting their IP to attract investors.

From first glance, it appears that the only inventors reaping the benefits from implementation of the Act are large multinationals. However, the Act does take into account the smaller firms and individual inventors with the creation of the micro-entity class aimed at assisting in the patent filing process. Those who qualify receive a 75% reduction in patent filing fees. An inventor can reap the benefits of micro entity status, if he:

  1. Qualifies as defined by USPTO regulations, issued by the Director;
  2. Not named on more than 4 previously filed non-provisional, U.S. patent applications;
  3. Gross income less that triple the median household income reported by the Bureau of Census;
  4. Not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that meets no. 3 above

Whether the micro-entity status will have any real impact on helping smaller firms take their innovation to market is debatable. Given that the Act incents smaller firms to innovate does glean hope.

Source: Leahy-Smith America Invents Act.

Jasmeet is graduate student pursuing her final year in the Master of Biotechnology program at the University of Toronto Mississauga. She is currently the Communications Officer for the Altitude Accelerator, a role which has allowed her to engage in the startup culture and entrepreneurship. In her future endeavors, Jasmeet hopes to pursue a career in business development in the life sciences.The RIC blog is designed as a showcase for entrepreneurs and innovation. Our guest bloggers provide a wealth of information based on their personal experiences. Visit Altitude Accelerator for more information on how RIC can accelerate your ideas to market.