Innovation Asset Blog

First to file transition necessitates smarter invention disclosure strategies

The first to file provision of the America Invents Act may not go into effect until next March, but biomedical companies need to be diligently preparing today. Research and business development teams should already be in close communication with one another, according to Genetic Engineering & Biotechnology News, surveying intellectual property pipelines and removing administrative obstacles that could delay invention disclosure processes.

For a number of firms, the traditional invention disclosure strategy has included revealing one's concept, gauging its potential marketability and then filing a patent application within one year. But according to the news source, that strategy will leave a company susceptible to considerable risk come March, as intervening third parties could file a related patent application and secure protection that nullifies any claim to rights the original inventor may have had.

In preparation for these new realities, companies would be wise to review exactly what constitutes a valid invention disclosure to avoid costly misinterpretations. Prioritization will also be key, according to the news source, as firms should be fast-tracking their most promising inventions and identifying any complicating factors that could delay the patent application process when the time comes.

The significance and complexity of these issues were underscored last week after drugmaker Mylan learned that it was being sued by Pfizer. The pharmaceutical giant has challenged the smaller firm's claims that it was the first to file an abbreviated new drug application (ANDA) in adequate detail. If its application is upheld, Mylan would gain 180 days of marketing exclusivity for its generic competitor to Pfizer's Pristiq Tablets.

Peter Ackerman

Peter Ackerman

Founder & CEO, Innovation Asset Group, Inc.