University of Southern California Position on the Patent Reform Act of 2007

June 20, 2007

America's universities are the principal source of the basic research that expands the frontiers of knowledge and produces discoveries that enhance our national security, strengthen our economic competitiveness, and enrich the lives of our citizens.  USC, as a leading U.S. research institution, is committed to these missions.  In addition to disseminating knowledge and encouraging scientific research, USC transfers its fundamental discoveries into the commercial sector for development into useful products.  The landmark 1980 Bayh-Dole Act, which authorized universities and small businesses to retain patent and licensing rights to inventions resulting from federally funded research, has been an extraordinarily effective mechanism for the transfer of basic discoveries, through the patent system, to the commercial sector for development.

USC understands that the provision to change the U.S. patent system to a first-inventor-to-file process would harmonize U.S. patent law with that of other countries.  Within this modified system, we believe it is imperative that U.S. patent law provide an effective grace period for publishing articles containing disclosure of the invention.  Since research universities are primarily institutions for learning and inquiry, our faculty may publish research results before fully exploring the patentability of the research results.  A 12-month grace period will encourage early publication of scientific research results without precluding subsequent filing of a patent application.  Any patent reform bill should include the assurances that 1) the publication or other disclosure of an invention by an inventor who files a patent application within one year of that disclosure is not treated as prior art to that patent application, and 2) any subsequent publications or other disclosures in the same subject area by others are not treated as disqualifying prior art to the inventor's application within the one-year grace period window.