Licensing Executive Society (U.S.A. and Canada) Urges USPTO to Impart Clarity and Exert Caution When Implementing ‘First to File’ Reforms

WASHINGTON--(BUSINESS WIRE)--During a roundtable discussion hosted by the United States Patent and Trademark Office (USPTO) on proposed modifications to 37 CFR and the examination guidelines to implement the ‘First Inventor to File’ provisions of the America Invents Act (AIA), Thomas Filarski, President of the Licensing Executives Society (U.S.A. and Canada), stressed that clear rulemaking and caution against exploitation will promote a level playing field that will foster healthy markets, improved goods and services, and greater employment opportunities.

“The AIA's change in US patent law from a first to invent system to a first inventor to file system presents risk, opportunities and challenges to the business community”

“The AIA's change in US patent law from a first to invent system to a first inventor to file system presents risk, opportunities and challenges to the business community,” said Mr. Filarski in his statement to the PTO roundtable. “We encourage the PTO to implement this new legal regime cautiously, and in a manner that best promotes the smooth operation and the growth of business.”

Established in 1965, LES (USA & Canada) is a non-profit, non-partisan professional society comprised of 4,500 members engaged in the transfer, use, development and marketing of intellectual property. Its mission includes exchanging best practices in the licensing of technology and educating on the laws and business of intellectual property.

LES (USA & Canada) was one of a dozen groups that participated on the PTO roundtable including the American Bar Association, the American Intellectual Property Law Association, and the Intellectual Property Owners Association among others.

On behalf of LES (USA & Canada) Mr. Filarski commended the PTO for its careful and thorough preparation of the proposed changes and provided suggestions to the proposed new regulations and guidelines which:

• Offered several specific suggestions for enhancing the mechanics of joint research agreements that reflect business realities;
• Encouraged continued practice of permitting confidential submission of applicant information in declarations; and,
• Urged the PTO to interpret the “on sale” provision in a manner that prevents commercial exploitation of the patent system and promotes strong patent assets.

Mr. Filarski concluded by expressing the Licensing Executives Society’s keen interest in working with the PTO to implement the AIA in a manner that fosters innovation and a vibrant inventive American economy.