Patent attorneys Mike LaBrie and Matt Gibson interviewed on likely impact of proposed Patent Reform Act of 2011

published in The Journal Record | May 24, 2011

McAfee & Taft patent attorneys Mike LaBrie and Matt Gibson were interviewed by The Journal Record’s April Wilkerson on what the passage of the proposed Patent Reform Act of 2011 will have on inventors, especially individuals and organizations with limited budgets and staff.

Both attorneys were featured guest speakers on the topic of “How to prepare for life after the Patent Reform Act of 2011 and other recent developments in patent law” before the Oklahoma BioScience Association on May 19, 2011.

If the measure passes Congress, the United States would become the first country to implement a “first-to-file” system instead of a “first-to-invent” system. While that change favors large companies who have the resources to get to the patent office quickly, it puts universities and small biotech companies with limited resources at a disadvantage, said LaBrie.

“I think it will put a big incentive on having a proper internal disclosure process where, as soon as they create or think they have created technology, to do a disclosure quickly and determine whether it’s a complete invention and whether it can be commercialized,” he said. “If they think that it is, they need to proceed with filing a patent application – quickly.”

For the medical research and biotech industries, though, time usually isn’t on their side, said Gibson, who holds a Ph.D. in cell biology and whose patent practice is concentrated on biotechnical, medical and pharmaceutical matters. “In other industries filing patents – for a new machine, for example – a drawing and explanation of how it works is necessary for the application. But biotech companies’ patents are contingent upon how much validation the research provides.”

The difference, he said, is that biotech discoveries must prove that they do what you say they will do. “So you have to run experiments and show, for example, that this compound could treat this disease,” said Gibson. “And that takes time.”

Other changes contained in the proposed legislation include a new post-grant process in which parties can challenge the validity of a patent, as well as the provision that the patent office be entitled to set its own fees and retain all the fees it generates rather than having those monies diverted to a general fund. It is hoped that the additional fees will allow the patent office to hire additional examiners and reduce the backlog of applications. Others, however, are concerned that an even greater backlog will be created because more people will be rushing to file patents under the “first-to-file” system.

The U.S. Senate passed the bill by a 95-5 vote in March 2011. The House is expected to vote on the measure in mid-June 2011.

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