Tutorial T5


T5: How Changes in Patent Law are Altering the Landscape of Innovation

Presented by: Clara Davis


Abstract. Recently, all three branches of government have made or proposed changes to the U.S. patent laws or administrative rules. Many changes have taken place quietly, and the effects are not well understood by non-patent attorneys. Patents are becoming more difficult and costly to obtain and enforce. Recent changes include: 1) what is eligible to be patented; 2) the standard used to determine the obviousness of an invention; 3) the significant increases in the time to obtain a patent, and the dramatic decline in patent application allowance rates; and 4) the requirements to avoid patent unenforceability due to failure to supply the Patent Office with documentation of the current state of the art. Possibly the most significant change to the patent system will come from patent reform legislation. Bills in the U.S. legislature would convert the U.S. patent system from a first-toinvent system to a first-to-file system. Moving to a first-to-file system will significantly impact individual inventors, universities, smaller companies and start-ups as they are forced to compete in the patent application filing race with larger companies that are typically better organized and funded for patent portfolio development.

The patent reform discussion should include all parties potentially affected by the changes. This tutorial provides information that individual inventors, university scientists, and leaders of smaller and start-up companies need to know to participate in the patent reform discussion. The tutorial begins with an overview of the U.S. patent system, the processes for acquiring patents in the U.S. and abroad, bars to patentability, and best practices for inventors. Building on the basic overview of the patent system, the tutorial then progresses to a discussion of recent changes in patent law and proposed legislative reforms.


Clara Davis

Hollingsworth & Funk LLC

8500 Normandale Lake Blvd., Suite 320

Minneapolis, Minnesota


B.S., M.S., and Ph.D. in Electrical Engineering

Clemson University

Clemson, South Carolina

J.D., cum laude

William Mitchell College of Law

St. Paul, Minnesota

Licensed to practice law in Minnesota (1995)

Licensed to practice before the U.S. Patent Trademark Office (2001)




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53rd IEEE International Midwest Symposium on Circuits and Systems