By Donald Zuhn --
Two Op-Eds appearing in The Scientist over the summer present
competing views on the impact of the Leahy-Smith America Invents Act. In an article published in July, Dr. George
Lewis, the Chief Scientific Officer and co-founder of ZetrOz, a biotech company
based in Connecticut, argued that "[t]he controversial law . . . reflects
our nation's bias toward corporations over smaller businesses and independent
or university-affiliated scientists" (George Lewis, "Opinion: Racing Toward Invention," The Scientist, July 23, 2013). As a result of the move to a firs-to-file
regime, Dr. Lewis contends that corporations
can "submit[] a new application with an updated version of an idea anytime
they deem appropriate, [and thereby] block less-endowed inventors who simply
cannot afford to file an application due to the costs involved." He also asserts that the AIA will inhibit open
communication among researchers due to the loss of the pre-AIA grace period,
and therefore, that the AIA also constitutes a "setback" for academic
institutions.
In an article published last month, G. Nagesh Rao, the co-founder of the public-private partnership, Made in America, and a former patent examiner and senior policy advisor for the U.S. Patent & Trademark Office, countered that while "there has been much criticism of the changes imposed by the Leahy-Smith America Invents Act (AIA)," such criticism has been "either incorrect or missing key pieces of information to explain why the law operates in a particular fashion" (G. Nagesh Rao, "Opinion: AIA Does Not Discriminate," The Scientist, August 21, 2013). Mr. Rao argues that "the passing of AIA did not result in a 'first to file' system, as Lewis and others argue," but rather "adopt[ed] a modified 'first inventor to file' system, which preserves some of the protocol matters of the former 'first to invent' system, including the 1-year filing grace period." He also asserts that the AIA provides "other added benefits for biotech, such as the implementation of three levels of examination procedures: accelerated, regular, or decelerated." Mr. Rao concludes that "no legislation emanating from a democracy is going to be perfect given the various stakeholders in play, but the passing of AIA was a step in the right direction for keeping the United States’ competitive edge in a globalized economy."
NEJM Perspective Calls for Recalibration of Bayh-Dole Act
By Donald Zuhn --
While Dr. Markel provides no proposed changes to the Act, he contends that "some of the most vexing quandaries weren't fully addressed in the original legislation." As for examples of such "quandaries," he suggests that revised legislation should address several questions:
Who should benefit from discoveries pertaining to nature or the human body? . . . [W]hat conflicts of interest must be identified and contained in order to protect patients? How can scientific discovery proceed if all innovations and research tools are patented and the discoverers control access to them?
Posted at 11:59 PM in Licensing, Media Commentary, Patent Legislation | Permalink | Comments (2)