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Washington Highlights

AAMC, Other Associations Comment on “First-Inventor-to-File” Patent Rule; PTO Extends Deadline

October 19, 2012—The AAMC joined five other higher education associations in an Oct. 5 comment letter  to the U.S. Patent and Trademark Office (PTO) regarding proposed implementation of the new “first-inventor-to-file” (FITF) rules under the America Invents Act (AIA).  The associations’ joint comments, responding to proposed rulemaking on the FITF provisions and the agency’s own examination guidelines issued in the July 26 Federal Register, objected to an unwarranted weakening of the “grace period” protection under the new proposed rules.  PTO extended the deadline for receipt of written comments to Nov. 5.

On Oct. 11, the PTO issued an extension of the deadline for receipt of written comments in response to the notice of proposed rulemaking published July 26 and notice of proposed examination guidelines also published July 26.

Throughout the six years of debate on patent reform that resulted in last year’s passage of the AIA, AAMC and the other associations had worked to preserve a grace period by which faculty inventors could describe their discoveries in publications or scientific presentations and not lose their ability to apply for and receive patent protection on those inventions within a reasonable period of time.  Under the PTO’s proposed implementation of the AIA, even insubstantial or trivial differences between an invention, as publicly described and as described in a patent application, could render the grace period inapplicable.

The associations noted that the legislative record supports a much stronger interpretation of the grace period than proposed by the PTO.  The associations also proposed changes to language in the implementation that would be more consistent with the intent of Congress.


Stephen Heinig
Director, Science Policy
Telephone: 202-828-0488

Heather Pierce, JD, MPH
Sr. Director, Science Policy & Regulatory Counsel
Telephone: 202-478-9926


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Washington Highlights, a weekly electronic newsletter, features brief updates on the latest legislative and regulatory activities affecting medical schools and teaching hospitals.

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Jason Kleinman
Sr. Legislative Analyst, Govt. Relations
Telephone: 202-903-0806