. "Appendix E: U.S. Patent Law Provisions that Promote University-Based Patenting and Technology Transfer." Technology Commercialization: Russian Challenges, American Lessons. Washington, DC: The National Academies Press, 1998.
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None of the foregoing is meant to suggest that the U.S. patent statute contains no provisions that are beneficial to universities. Several provisions that the university community can use to its advantage are listed and discussed below. However, U.S. patent statute has not been specially adapted to benefit the university community. Provisions in the patent laws of other jurisdictions also can be of benefit to a research university.
The Grace Period
The United States is a grace-period jurisdiction: if a professor publishes his or her invention, he or she has one year from the date of first publication to file a patent application before that invention passes into the public domain.3 If the professor waits more than one year, then patent rights are forfeited. Most other jurisdictions are absolute novelty jurisdictions. In an absolute novelty jurisdiction, a patent application must be placed on file before the invention is published (or, in many jurisdictions, disclosed to the public in any way, such as by a speech) or rights to that invention are lost.
The advantages of the grace period to the university community are great. Industrial research can be kept secret for long periods of time. University research, in contrast, is made known to the public much more rapidly. Because industry has more time to develop a line of research before it is published, it also has more time to decide whether a particular invention is worth the cost of filing a patent application. Universities, on the other hand, have comparably small budgets with which to pursue patent filings and simply cannot afford to file a patent application on every new invention that is published. Exacerbating the problem is that university research, while ground-breaking and innovative, may not be motivated by an immediate commercial objective. Without a commercial objective (and corresponding market information), deterring whether a particular invention, however worthy, should have patent protection is difficult.
Whenever possible, American universities attempt to preserve potential patent rights in jurisdictions outside the United States. The U.S. grace period is of no consequence in preserving such rights, and if preserving patent rights in jurisdictions outside the United States is critical to securing business interest, U.S. universities must operate under an absolute novelty rule.4 Nevertheless, when a commitment to a patent filing simply cannot be made before a disclosure of the invention and causes the loss of patent rights in absolute novelty jurisdictions, the one-year grace period provides time to determine (through
See 35 USC § 102(b).
The new provisional filing system is thought to provide a quick, inexpensive means to preserve patent rights outside the United States. For reasons that are beyond the scope of this paper, this belief is incorrect.