IDBS Blog | 20th September 2011

America Invents Act is Now Law – aka “Get Your Data Together, We Have to File-Fast!”

President Obama signed the America Invents Act into Law last Friday. So it’s all change at theUSPTO and with a handy 15% increase in fees too. But what does it mean to researchers, R&D organizations and their potential blockbuster data?

The days of simply time-stamping the constituent parts of potentially valuable IP and piecing it all together, at some point down the line, are gone. You need to combine the disparate pieces of your invention together, qualify and internally examine it …fast!

Many Electronic Laboratory Notebooks or ELN systems – particularly in the field of medicinal chemistry for pharmaceutical companies – were initially justified (and designed) as solutions for establishing IP priority on a first-to-invent basis. Getting ‘fast-to-pdf’ was the goal.

The actual filing could happen at some later time once all the other information needed to establish the benefit of the chemical compound was generated and itself established as a time-stamped document. With the new legislation, this functional model now breaks. I agree with analysts, such as Michael Elliot of Atrium Research & Consulting LLP, that this will lead to a partial extinction event in this informatics sector.

The legacy ‘fast-to-pdf’ approach also misses the real potential of ELN systems. Patent generation, like R&D, is a multidisciplinary information integration activity that needs to be slick and quick –particularly under first-to-file and therein lies the basis for the long term value of data-centric ELN.

Apart from the obvious benefits of reduced wastage, improved digital security and sharing of best practice, data-centric ELN systems are proven to increase the pace of research, through personal productivity gains, task-flow management and better collaborative decision-making.

This favors ‘first-to-file’, with the surety that the data are substantiated, down to the raw data level. These data can be scrutinized by examiners from multiple jurisdictions and validated easily, despite the years of elapsed time between filing and examination.

Also, and all-important in today’s IP and licensing environment – where ownership of the ‘object’ is far less important than the information about what it does – the data needed for filing must be multidisciplinary. As a result, so must be the ELN system used to secure and exploit valuable IP.

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