Did the America Invents Act Change University Technology Transfer?

Abstract

University technology transfer offices (TTOs) are the gatekeepers to groundbreaking innovations sparked in research laboratories around the U.S. With a business model reliant on patenting and licensing out for commercialization, TTOs were positioned for upheaval when the America Invents Act (AIA) transformed U.S. patent law in 2011. Now almost ten years later, this article examines the AIA’s actual effects on this patent-centric industry. It focuses on the five key areas of most interest to TTOs: i) first to file priority; ii) broadening of the universe of prior art; iii) carve-out to the prior commercial use defense; iv) micro-entity fees; and v) post grant proceedings to challenge patent validity.

For the most part, TTOs have adapted well to the AIA changes. This is not least because universities have a widespread pro-publication culture that caused TTOs to adopt policies that were already AIA-friendly. But some AIA changes have caused TTOs to rethink certain patent filing strategies and in some cases shift how they work with their university faculty clients. TTOs are also facing other cultural challenges to their licensing model that they must address with creative solutions, some of which may push the boundaries of the traditional TTO mission. This article presents and analyzes the AIA changes. It then discusses their effect on university technology transfer by relaying anecdotes and explanations collected directly from the TTOs through interviews. Beyond reporting about policy shifts, the nuanced and at times surprising explanations also convey the tensions faced by TTOs as they market innovation, including balancing earning revenue for the inventor and the university with a mission to transfer the innovation into the world for impact. The article can therefore serve as a springboard for discussing broader questions, including the AIA’s effect on all industries that are reliant on patent value, and extrapolating generally to reflect on the true impact of the AIA.

Keywords: Intellectual property, patent law, America Invents Act, AIA, patent filing priority, prior art, prior commercial use defense, university patent enforcement, licensing, infringement, micro-entity status

JEL Classification: K11, O33, O34, O36, O38