Over the past 30 years the ties between academic research and commercial enterprise have increased enormously. Much of this increase has involved attempts by universities to capitalize on the intellectual property created by their research scientists using the US patent system. The Editorial in the October issue of Nature Methods discusses this change and the challenges facing academics interested in commercializing their innovations.
The America Invents Act was signed into law on September 16 by President Obama as the Nature Methods Editorial went to press. As discussed in the Editorial, this law introduces a fundamental change in US patent law that impacts how US academics and their technology transfer offices will handle their intellectual property once the law goes fully into effect a year from now.
Overall, the harmonization of US patent law with the rest of the world should greatly simplify patent claims. But it also presents challenges and fails to fix some aspects of patent law that make little sense, like forcing the same 20-year patent lifetime on classes of inventions that display huge disparities in the time and cost of moving from patent filing to commercial product and the corresponding difference in commercial lifetimes. The implementation of different patent lifetimes for different classes of inventions, for example pharmaceuticals versus computer technology and processes, would help correct severe imbalances in the current system. But given the years required to obtain passage of the America Invents Act, further significant changes are likely years away.
The links below have additional information and commentary on patent law and commercialization in academia.
US switch to first-to-file patents could cause minor shake-up Nat. Med. 17, 906 (4 Aug 2011)
New models emerge for commercializing university assets Nat. Biotechnol. 29, 774 (8 Sept 2011)
Patent reform on the brink Nat. Biotechnol. 29, 778 (8 Sept 2011)
The Effects of the America Invents Act on Technological Disclosure Patently-O Blog (8 Sept 2011)
Patent reform bill passes US Congress – September 09, 2011 Nature newsblog (9 Sept 2011)
Patents Directed to Human Organisms Patently-O Blog (9 Sept 2011)
Guest Post – To Promote Progress in Science and Job Creation Patently-O Blog (12 Sept 2011)
Patent medicine Nature 477, 249 (14 Sept 2011)
New Patent Law Could Change How Academics Commercialize Discoveries ScienceInsider (14 Sept 2011)
Patent Reform Shuffles Who Is First in Line Science 333, 1559 (16 Sept 2011)
Guest Post: Preclusive Inventor Disclosure Under Leahy-Smith Patently-O Blog (22 Sept 2011)