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The Changing Face of Patent Law

9/27/2013 --

New book shows why businesses need to keep pace with the fast-moving intellectual property system.

ANN ARBOR, Mich. — New laws, new innovations, and expanded global trade can make for a dizzying patent and intellectual property environment. That's why U-M Ross Professor Lynda Oswald and Daniel R. Cahoy of Penn State's Smeal College of Business edited The Changing Face of U.S. Patent Law and its Impact on Business Strategy. The book contains articles from the leading scholars on patent law, and shows managers what they should be thinking about in terms of intellectual property. In this Q&A, Oswald explains why patent law is such a critical issue for business leaders to understand, and what's causing the rapid change.

Why this compilation of work at this time?

Oswald: For one, this is a time of great change for patent law in the United States. Much of this work was in response to the America Invents Act, the AIA, which is the most important overhaul of patent actions since the Patent Act of 1952. The biggest implication for business is that it moved us from the first-to-invent system to a first-to-file system. The rest of the world has had first-to-file for a long time, and we were the holdout. The longtime concern over first-to-file is that it would disadvantage small inventors and entrepreneurs. Whether it will, to me, is an open question. We don't really know what the impact is going to be. Congress told the Patent and Trademark Office that it wants annual studies on the impact of that change. There also were some protections for small inventors in the bill, but it's still really a race to the patent office with your application.

Another reason for this book is that the Academy of Legal Studies in Business has a number of very prominent patent scholars doing work in a variety of different areas. We're trying to spark some integration between them. My co-editor and I held a conference here at Ross in May 2012 to bring together the most promising scholars who deal with patent issues, and this book is the outcome of that.

Besides the AIA, the U.S. patent system seems to be in a state of flux recently. What else is driving that?

Oswald: There's been a change in the industries where we're seeing innovation. It has moved from machinery and industrial to pharmaceuticals, software, and business methods. We're also seeing a change in the international conversation about patent law and who the largest players are. The U.S. is still the biggest player, but China now has a very loud voice. They are a major trading partner and are modernizing their intellectual property system. A lot of global trade issues are centered on intellectual property protection, and patent systems are at the center of that. So you have all these things converging at once.

How does the book address these changes?

Oswald: What you have is a lot of prominent scholars looking at not just the AIA, but the wider context of how patent law is changing and how it's affecting businesses and the choices they make. The book is a framework on how to think about the big issues out there right now and what a business should be thinking about. As a manager, it will show you what should be on your radar screen.

You say right up front in the book that it's not good enough anymore for a business person to be aware of the patent system. It's critical to know it, and know how to manage it. Why is that?

Oswald: That's because of the huge growth in patent activity globally. The number of filings is growing, the number of patents is growing, and there's tremendous growth in wealth being held in the form of intellectual property. It used to be that physical assets like property and machinery were the biggest sources of asset wealth for companies. Now it's patents and other forms of intellectual property. You need to manage those assets very, very carefully. We're seeing markets for patents, where a patent portfolio is being valued and sold at auction. So it can be a source of income.

Is U.S. patent law keeping up with the new innovation economy?

Oswald: Technology always moves faster than the law. The law catches up, but there's always a lag. It takes the courts a while to understand what's going on and then shift the doctrine to match it. If you look at the Patent and Trademark Office, they are geared toward customer service in a way you don't normally see from a government agency. They really do spend a lot of time thinking about their mission and how they can better serve American business.

More Information About the Book.

For more information, contact:
Terry Kosdrosky, (734) 936-2502,