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University Associations Join Statements on Grace Period, Patent Reform

December 12, 2014—The AAMC joined five higher education associations in a statement on the “Benefits of Harmonization of an Effective Grace Period .”  The statement comes in response to a Nov. 19 US Patent and Trademark Office (USPTO) public roundtable and the agency’s interpretation of grace period under the 2011 America Invents Act (AIA, P.L. 112–29).

The associations outline concern that the current grace period protection as implemented by the USPTO is weaker under the AIA’s “first inventor to file” system that determines patent priority.  Under current law, faculty inventors are able to publish, publicly present discoveries, and file patent applications within 12 months without disclosures being cited as “prior art defeating the application.”  However, if a colleague, potential rival, or other researcher publishes a variation or extension on work in the period before filing of the first inventor’s application, intervening disclosure could be considered prior art and defeat the patent application. 

The higher education associations have proposed a fix for this concern, which would effectively prevent a second inventor from potentially blocking a patent application.  The groups also points out the advantages of creating such protection and “harmonizing” patent law with the systems of other countries.

In addition to AAMC, the group includes Association of American Universities; American Council on Education; Association of Public and Land-grant Universities; Association of University Technology Managers; Council on Governmental Relations.

The same associations joined a Dec. 9 letter  to House and Senate Judiciary Committee leadership encouraging Congress to consider recent judicial and administrative developments, and a plunge in the patent litigation rate, before moving forward with legislation to reduce abusive practices in patent litigation. The letter notes concerns that recent proposals to address so called patent trolls may “go far beyond what is necessary or desirable to combat abusive litigation.”

The letter highlights the AIA; the Judicial Conference of the United States’ adoption of changes to the Federal Rules of Civil Procedure; and the Federal Trade Commission and state attorneys general’s increased use of their authority as developments that have “fundamentally change the landscape under which patent legislation should be considered.” 

Both statements were submitted in advance of the Dec. 10 Senate Judiciary Committee hearing on the confirmation of Michelle K. Lee as USPTO Director.


Matthew Shick, JD
Director, Gov't Relations & Regulatory Affairs
Telephone: 202-862-6116

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


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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
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Telephone: 202-903-0806