WASHINGTON, D.C. – Today, United States Senators Tammy Baldwin (D-WI) and David Vitter (R-LA), along with United States Representatives Jim Sensenbrenner (R-WI) and John Conyers, Jr. (D-MI), introduced bipartisan legislation to restore the effective one-year protection, known as the “grace period,” for inventors who publicly disclose discoveries prior to filing a patent application on those discoveries. The Grace Period Restoration Act corrects an unintended oversight in the Leahy-Smith America Invents Act (AIA).
“Wisconsin has a rich history of investing in science, research and technology – the building blocks of an innovation economy,” said Baldwin. “In order for Wisconsin, and the rest of America, to out-innovate the rest of the world we must protect and strengthen these investments. I’m proud to join this bipartisan coalition to introduce the Grace Period Restoration Act so that our nation’s best and brightest are encouraged to create and collaborate, while preserving the patentability of new ideas.”
“Inventors and researchers shouldn’t be punished for sharing their discoveries. Our legislation would fix this unintended issue so we can protect future young inventors and encourage important collaboration,” said Vitter. “We have some impressive research programs going on at Louisiana universities, and our legislation will keep them on the leading edge of innovation.”
“The AIA’s grace period is ambiguous and has been very narrowly interpreted,” said Sensenbrenner. “As a result, intellectual property rights are inadequately protected, discouraging innovation. The bipartisan Grace Period Restoration Act strengthens the grace period and clarifies the inadvertent uncertainty caused by the AIA. It will foster innovation and help keep America on the cutting edge of science and technology.”
“I support the Grace Period Restoration Act because it protects our entrepreneurs and encourages investments in our innovation Nation,” said Conyers, Jr. “This bipartisan legislation will provide much needed clarity to the grace period under the America Invents Act and our esteemed patent system.”
The U.S. Patent and Trademark Office’s regulatory interpretation of the AIA grace period provision, made possible by unintentionally ambiguous language in the statute, effectively eliminates the grace period protection of public disclosures by allowing obvious variants of those disclosures – subsequent disclosures that have only minor differences from the original invention – to prevent the original inventor from obtaining a patent on the invention.
Universities, which perform over 60 percent of basic research in the United States, are concerned that the flaws in the AIA grace period provision will discourage their researchers and other inventors from early dissemination of their discoveries in scientific journals, conference proceedings, or other publications. Such early public disclosures of the research results accelerate knowledge dissemination and innovation.
“Without an effective grace period, university researchers will be discouraged from early disclosure of patentable discoveries,” said University of Wisconsin – Madison Chancellor Becky Blank. “If this problem becomes widespread it will seriously threaten this nation’s long-time role as the world’s leader in innovation. That leadership is essential, she added, to economic growth and prosperity.”
“A robust grace period will allow the inventor to refine the invention,” said Carl Gulbrandsen, Managing Director of the Wisconsin Alumni Research Foundation (WARF). “It also encourages collaboration, and collaboration leads to innovation. An effective grace period encourages collaboration because it eliminates the concern for misuse of the disclosed invention by a potential collaborator. A strong, effective grace period is particularly important for universities, which are open environments, and it will encourage collaborations between universities and industry.”
“Our nation’s founders thought patents were so essential to the American system of law that they enshrined them in the Constitution,” said Association of American Universities President Hunter Rawlings. “American prosperity over more than two centuries has proven the wisdom of their action. An effective grace period preserves the public benefits of early disclosure of research results, supporting universities’ mission of disseminating knowledge and preserving the patentability of inventions resulting from that research.”
"APLU applauds the introduction of the Grace Period Restoration Act, which will help encourage the public release of research discoveries while safeguarding intellectual property rights,” said Association of Public and Land-Grant Universities (APLU) President Peter McPherson. “This broad dissemination of knowledge is central to the mission of public universities. The Grace Period Restoration Act will facilitate the ability of scientists to build upon existing knowledge to advance innovations that have enormous potential to benefit our society. APLU appreciates the leadership of Senators Baldwin and Vitter and Representatives Sensenbrenner and Conyers for offering the right solution. We look forward to working with them to support passage of this important legislation."
"This important legislation provides research institutions such as Tulane the clearly defined ability to pursue our mission of creating new knowledge through research and discovery and disseminating that knowledge without fear of giving away the very important and valuable right to move our discoveries to the marketplace,” said John Christie, Executive Director, Office of Technology Transfer and Intellectual Property Development, Tulane University. “These discoveries become medicines, therapies, vaccines, renewable energy and much more, all of which make better lives and create meaningful jobs for the people of the United States."
“LSU recognizes the importance and value of restoring the Grace Period to the US patent system,” said Louisiana State University’s Dr. F. King Alexander. “This important legislation will allow researchers across our university to participate in the publication and dissemination of breakthrough discoveries while at the same time preserving the intellectual property rights crucial for our partners to move discoveries from the laboratory to the marketplace.”
Learn more about the legislation here.