BROOKLYN LAW STUDENTS LAUNCH FIRSTTODISCLOSE.ORG IN ANTICIPATION OF NEW AMERICA INVENTS ACT PATENT PRIORITY RULESOn Mar 15, 2013
Mar. 15, 2013 – BROOKLYN, NY – The Brooklyn Law Incubator & Policy (“BLIP”) Clinic (www.blipclinic.org) announces the launch of FirstToDisclose.org (http://www.firsttodisclose.org), a community-powered site created by law students to aid small inventors in anticipation of the new patent priority rules set forth by the Leahy-Smith American Invents Act (“AIA”).
The new AIA priority rules, which go into effect on March 16, 2013, officially mark the shift from America’s longstanding “first-to-invent” system to a modified “first-to-file” system that will grant patent rights to those who are the “first to file” a patent application for a novel invention. Disclosing a patent eligible invention, however, can temporarily reserve the right to an invention and prevent others from capitalizing on the disclosed invention. FirstToDisclose.org meets this need by providing inventors with an easy to use resource for timely disclosing their inventions online.
“My students, representing a new generation of tech-savvy, burgeoning lawyers, have built a platform for startup innovators to share their ideas openly with the world,” said Professor Jonathan Askin, Founder/Director of the Brooklyn Law Incubator & Policy Clinic. “The FirstToDisclose site is evidence of a new collaborative ethos among innovators, and now their legal advocates, with a desire to expose innovations for the broadest public benefit.”
“FirstToDisclose arose from the attitude fostered within the BLIP Clinic that BLIP students, and law students overall, must strive to become a new breed of lawyer. This means working with entrepreneurs to find innovative legal solutions that help achieve their visions and being open to pushing boundaries,” said Gabriel Goldenberg, a part-time law student at Brooklyn Law School and member of the BLIP clinic who served as lead developer for the project.
The FirstToDisclose website was built to help inventors ensure that they maintain priority under the new AIA “first-to-file” system and the ensuing race to file. Under the new AIA rules, an inventor that discloses an invention publicly can prevent others who independently develop the same invention from gaining patent protection. Such a disclosure also starts a one-year “grace period” during which the disclosing inventor must file for a patent or forfeit patent protection. Inventors may also use FirstToDisclose to publish inventions they want to place in the public domain, enabling inventors to share technology with fellow innovators and prevent others from monetizing or patenting these technologies.
The purpose of FirsttoDisclose.org is simple – allow inventors to publicly and sufficiently disclose their invention and thereby prevent others from “winning” the race to file at the USPTO. The one-year grace period for filing a subsequent patent can allow time for inventors to retain counsel to draft a patent application and, especially in the case of small inventors, procure the necessary funding to fully realize their inventions.
“One consequence of the move from ‘first-to-invent’ to ‘first-to-file’ is that it will likely be difficult for small inventors to beat larger enterprises to the patent office with their innovations. First-to-Disclose is an effort to counterbalance the burden imposed on small inventors,” said Professor Jonathan Askin.
Students involved in the BLIP clinic developed the concept of FirstToDisclose.org after studying the America Invents Act and realizing how the AIA rules might potentially disadvantage smaller scale inventors and entrepreneurs.
“The Firsttodisclose.org idea sprung out of a BLIP presentation on the upcoming changes to the U.S. patent system,” said Anand Patel, a former biomedical engineer and third year law student who helped co-found the project. “A group of BLIP students saw the potential need for a platform for inventors to publicly disclose their invention. Many commentators have suggested that the changes to the patent system will hurt smaller inventors who may not have the resources to quickly file for a patent that larger businesses may have. Our site will give inventors a platform to publicly disclose their invention to ensure they will not be barred from using their own innovative inventions.”
FirstToDisclose was developed as a project by law students in the BLIP Clinic, a modern, in-house technology-oriented law firm at Brooklyn Law School. Since its inception in 2008, BLIP has been training a new generation of lawyers to be well-versed across the spectrum of skills needed to represent emerging tech, Internet, communications, and new media companies.
To date, BLIP has helped more than 500 clients presenting diverse legal, business, and policy challenges. BLIP accepts clients who require creative legal representation and arguably advance the Internet or digital economy, and for whom expensive legal services would act as a barrier to entry in their respective industries. Learn more about the BLIP Clinic at http://www.blipclinic.org.