US Patent Law Reform: What this means for Australian universities

Date: 2011-11-07
Authors: Tracey Hendy & Sarah Hennebry

Changes to US Patent Law

Some of you may be aware of new legislation recently signed into law in the US, The Leahy-Smith America Invents Act. Over the coming weeks, we aim to provide you with a snap-shot of the changes resulting from the new act.

Changes to fees

The first change to be felt under the new legislation relates to official fees. The most significant change is a 15% increase in official fees. This includes filing, prosecution, and maintenance fees.

Further to this, there is a new US$4,800 fee for prioritized examination. We will provide you with further information on this procedure in the coming weeks.

Do Australian universities qualify for further discounts?

Many of you would be aware that previously, a 50% discount on fees was available to applicants qualifying as ‘small entities’. The good news is that most applicants previously considered small entities, including Australian universities, will still be eligible for a 50% discount on fees.

A discount of 75% is applicable to certain non-profit and public universities. Unfortunately, universities outside the US do not qualify for this discounted rate.

Are there risks?

Failure to properly investigate your entitlement to small entity status could form the basis of an inequitable conduct claim and invalidity of the patent, if the patent is later challenged in court. So it is important to determine if there has been, or if there is an obligation to assign, grant or license any rights in the invention to any entity which would not also qualify for small entity status. Such actions would result in the loss of the patentee’s entitlement to small entity status.

To avoid any risk of patent invalidity, you should keep us informed of any transactions involving your intellectual property rights. We can then determine any change to your entitlement to small entity status.

What is the overall impact on fees for Australian universities?

While there has been an increase in overall fees, the news is not all bad. Those previously qualifying for small entity status will continue to be eligible for a 50% discount on official fees.

In the meantime, the favourable exchange rate makes this the ideal time to consider filing for protection of your inventions in the US.

This article was written by Tracey Hendy, Special Counsel and Sarah Hennebry, Patent Scientist, Melbourne.