AUTM members, please feel free to use this document when making presentations about
Hot topics are issues in which AUTM and its members are actively
engaged. Current hot topics include:
The recently enacted American Invents Act (AlA) brings the most significant changes to the U.S. patent law in over a century - and they are not good changes. Directly and indirectly these changes will weaken patents and greatly reduce the incentive for licensing, changes that will frustrate innovation by favoring big business over innovators (universities, independent inventors and small business). View the complete letter from WARF.
On January 10, 2013 AUTM member, Lori Pressman, testified on behalf of AUTM at the USPTO’s Roundtable of Genetic Testing. AUTM’s written testimony and appendix can be found here and is a helpful resource for anyone needing further information on this issue. Written testimony. Appendix.
AUTM and other university associations submitted comments on proposed rules and guidance to implement the first-inventor-to-file provisions of the America Invents Act. Read the submission here.
Wisconsin Alumni Research Foundation (WARF) submitted comments regarding "first to publish" USPTO Proposed Grace Period. Read the submission here.
Traditionally, the only parties involved in the international phase of the Patent Cooperation Treaty (PCT) have been the applicant and the Offices conducting the processing. But the PCT observation service now permits third parties to submit observations relating to published PCT applications during the international phase of processing. The USPTO also recently implemented such a system, as part of the America Invents Act. Read more here.
The AMP v. USPTO Remand: Déjà Vu as Federal
Circuit Majority Reaffirms that Myriad’s Isolated DNA Sequences
Are Patent-Eligible, Eric W. Guttag,
Eric W. Guttag IP Law Office. Read the full analysis.
"A U.S. federal appeals court has once again affirmed the right of Myriad Genetics Inc to patent two genes linked to breast and ovarian cancer," Reuters, Aug. 16. Read more.
Free agency is a concept which would allow university faculty to shop discoveries to any technology transfer office for licensing—regardless of where the research was conducted. Learn more.
In a unanimous decision, the Supreme Court held that the claims in Mayo Collaborative Services v. Prometheus Laboratories Inc. (Mayo) effectively claim a law of nature and are not patent-eligible under 35 U.S.C. § 101. Learn more.
Stanford v. Roche is a case that sparked great interest for U.S. universities. Read more.
AUTM has undertaken the task of recognizing the various interests of stakeholders in academic commercialization process, and has advanced the concept of quantifying the expectations each party vested in the process may reasonably hold by establishing the AUTM Guidelines for Balancing Stakeholders’ Interests. The guidelines seek to define and balance these varied and sometimes only partially aligned interests. Read more.
The AUTM Board voted unanimously to file an amicus brief in support of i4i. Learn more by reading "Review by the Supreme Court of the Standard for Patent Validity in Microsoft v. i4i: What Does It Mean for Patents Owned by AUTM Members?" by Eric W. Guttag
AUTM submitted its response to the Request for Information on the Commercialization of University Research issued by the Office of Science and Technology Policy and the National Economic Council. As stated in the request, "transferring viable research discoveries to the marketplace that can pose the greatest challange to innovators and entrepreneurs." Read AUTM's response here.
Gene patents and licensing practices have recently come under
scrutiny following the Secretary's Advisory Committee on Genetics,
Health, and Society (SACGHS) release of its Public Consultation
Draft Report on Gene Patents and Licensing Practices and Their Impact on
Patient Access to Genetic Tests. For more on this issue visit
Patents and Licensing Practices page.
AUTM keeps a watchful eye on certain public policy issues regardless of whether or not there is specific action to be taken at the present time. For more information, visit the on ongoing public policy issues page. Ongoing public policy issues include:
AUTM educates and communicates with public officials - rather than lobbying according to the wishes of any segment of the overall AUTM membership - and seeks to keep members informed about issues and legislative activity so individuals may respond in a way appropriate to their particular circumstances. However, certain issues arise where the association is called to take a position. AUTM identifies when such action is appropriate by following certain guidelines for taking a formal position.
To view an archive of past issues, click here.