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Practice Professor of Law Cynthia Dahl explores impact of America Invents Act on university technology transfer

October 14, 2020

Nearly 10 years after the passage of the America Invents Act (AIA) in 2011, Practice Professor of Law Cynthia Laury Dahl examines the Act’s effects on the patent-centric industry of university technology transfer offices (TTOs) in her recent paper, “Did the America Invents Act Change University Technology Transfer?” Dahl’s pathbreaking work first presents and analyzes AIA changes and then discusses their effects on university technology transfer through anecdotal evidence gathered through interviews with the TTOs.

This paper, which will be published in the Texas Intellectual Property Law Journal later this fall, is a companion piece to “Reviewing Inter Partes Review Five Years In: The View From University Technology Transfer Offices” published in The Research Handbook on Intellectual Property and Technology Transfer (Jacob H. Rooksby ed., Edward Elgar Publ. 2020).

Dahl describes TTOs as “the gatekeepers to groundbreaking innovations sparked in research laboratories around the U.S.” She focuses her analysis on five key areas of high interest to TTOs: (1) first to file priority; (2) broadening of the universe of prior art; (3) carve-out to the prior commercial use defense; (4) micro-entity fees; and (5) post-grant proceedings to challenge patent validity.

Dahl finds that TTOs have adapted fairly well to the AIA changes, which she attributes largely to the fact that “universities have a widespread pro-publication culture that caused TTOs to adopt policies that were already AIA-friendly.” Still, she writes, TTOs have had to make adjustments to patent filing strategies and methods for working with faculty, and these changes are in addition to “other cultural challenges,” the solutions to which “may push the boundaries of the traditional TTO mission.” Dahl notes, in particular, “the tensions faced by TTOs as they market innovation, including balancing earning revenue for the inventor and the university with a mission to transfer the innovation into the world for impact.”

She intends the article to serve as a “springboard for discussing broader questions, including the AIA’s effect on all industries that are reliant on patent value, and extrapolating generally to reflect on the true impact of the AIA.”

Dahl is the Director of the University of Pennsylvania Carey Law School’s Detkin Intellectual Property and Technology Legal Clinic, which she characterizes as a “teaching law firm” that gives students the chance to help clients set and implement IP strategy.

She specializes in the business applications of intellectual property and technology and writes and speaks extensively around the country about teaching in this area.

Before joining the Law School faculty, Dahl was Senior IP Counsel for TruePosition, Inc. a Liberty Media-owned international wireless location company. While at TruePosition, she grew the company’s extensive patent portfolio and developed the IP portfolio of three related start-up ventures, drafted all manner of intellectual property agreements, and managed litigation and advocated in front of international standards bodies.

Prior to working at TruePosition, she was a litigation associate at Holland and Hart LLP and Pennie and Edmonds LLP. Before launching her legal career, she counseled artists at Volunteer Lawyers for the Arts in New York and held several jobs in policy and the press, including working for Senator Bill Bradley (D-NJ) and Nina Totenberg at National Public Radio.

As Detkin Clinic director, Dahl works closely with the Penn Center for Innovation and the Law School’s Center for Technology, Innovation and Competition.

Read more Law School faculty papers and publications.