1 New Patent Law Changes UTEP’s Plans to Implement February 5, 2013 Susan Avena Jeni Clark Gary Williams.

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Presentation transcript:

1 New Patent Law Changes UTEP’s Plans to Implement February 5, 2013 Susan Avena Jeni Clark Gary Williams

2 Leahy-Smith America Invents Act H.R Leahy-Smith America Invents Act H.R Effective Date: March 16, 2013 Key changes include first-to-file rather than first to invent Significant changes are also planned in the handling of Invention Disclosures (ID) which will help facilitate the sense of timely filing of ID AND improve the licensing process and attendant return on licensing income. IPC membership will be expanded to better handle the increased effort required to evaluate ID potential. Letters to new members will be sent out within the next two weeks

3 Invention Disclosure Process Within one week after an Invention Disclosure has been submitted to The Office of Technology Transfer a team will evaluate the idea’s potential. This team includes:The Office of Technology Transfer 1)The inventor(s), 2)Tech transfer rep 3)Intellectual Property Committee (IPC) member, 4)CREIE member and CREIE intern 5)Ad hoc members as appropriate Within 3 months the team will report back to the IPC having carried out a patent/publication search, market research, commercialization options and assessment of licensing potential. This process was developed to address the changes in the patent law (Leahy-Smith American Inventors Act H.R ) and to improve UTEP’s chances to license

Ideas Patent & Publication Search Market Research Commer- cialization Options Licensing IPC Invention Disclosure submission Inventor(s) Tech Transfer CREIE rep IPC Member Ad Hoc Members  Team Leader Market Research CREIE rep (& intern) Inventor(s) IPC Member Commercialization Options CREIE rep (& intern) Inventor(s) IPC Member Licensing Options CREIE rep (& intern) Inventor(s) IPC Member

5 Inteum Online Invention Disclosure Form Inteum Online Invention Disclosure Form All invention disclosures can now be submitted online at

6 Inteum Online Invention Disclosure Form Inteum Online Invention Disclosure Form Create an Account Once Account is approved, you can submit and check the status of your invention disclosure online.

7 New Patent Law Changes UTEP’s Plans to Implement February 5, 2013 Susan Avena Jeni Clark Gary Williams