March 16, 2013: The U.S. Transitions To A ‘First-Inventor-To-File’ Patent System

Under first-to-file, an inventor who does not take prompt action to protect his or her invention faces a higher risk that a later inventor will end up holding the associated U.S. patent rights.

From Forbes:

“The United States has long had a “first-to-invent” patent system in which the date of invention could trump the date of filing a patent application in determining patent rights. However, that is set to change due to the America Invents Act (AIA), a sweeping patent reform bill signed into law by President Obama in September 2011.

For patent applications with an effective filing date of March 16, 2013 or later, the United States shifts to what is often – and only partially accurately – called a “first-inventor-to-file” or “first-to-file” system. The reality is more complex than those designations imply, as patent rights in the United States under the first-to-file system will depend on the interplay between the dates of filing and of any pre-filing disclosures of the invention…”



Suddenly, Hollywood Is A Startup Hotbed

Venture capitalists are flying to Los Angeles regularly hunting for innovative ideas at valuations that are a steal compared to Silicon Valley or New York.

From BusinessInsider:

“There’s something brewing in Los Angeles. Suddenly, Hollywood has becoming a startup hotbed.

Incubators and accelerators are popping up everywhere. Venture capitalists are becoming frequent fliers at LAX. Celebrities are stamping their names on new companies. And TV industry executives are quitting their jobs to become entrepreneurs.

In many ways, Los Angeles looks like New York City did three years ago. One early-stage investor, Gary Vaynerchuk, thinks LA will eventually trump both New York and San Francisco as the ultimate location for startups…”

23 Hot LA Startups You Need to Watch [web]

UCLA Startup, ImaginAb, Closes $12.5m Round of Series A Financing

Founded in 2007 by UCLA Faculty (Drs. Robert Reiter, Anna Wu and Christian Behrenbruch), ImaginAb, Inc. is a biotechnology company specializing in the development of engineered antibody fragments for diagnostic imaging and novel therapeutic applications.

From PRNewswire:

LOS ANGELES, March 26, 2012 /PRNewswire/ — ImaginAb, Inc. a clinical-stage company developing in vivo imaging agents for Positron Emission Tomography (PET) based on antibody fragment technology, today announced the completion of a Series A financing – led by Novartis Venture Funds. The oversubscribed Series A round includes Merieux Developpement, Nextech Invest, Cycad Group and existing seed investor Momentum Biosciences. Novartis Venture Funds and Merieux Developpement will both appoint Directors as representatives of the Series A investors.

“This is an important growth financing event for ImaginAb because it augments financial resources from our rapidly expanding pharma companion diagnostics program and strategic NCI funding, to enable us to accelerate the clinical development of our cancer and immunology imaging programs,” said Christian Behrenbruch, Ph.D., Chief Executive Officer of ImaginAb.

ImaginAb’s technology enables antibodies to be re-engineered into smaller proteins (fragments) with fast kinetics suitable for diagnostic imaging, while maintaining target biospecificity. In this way true companion in vivo diagnostics can be rapidly developed that enable target expression to be profiled in tissues in a non-invasive, whole-body manner. The company has over a dozen development programs with global biopharma companies to develop companion diagnostic imaging agents to therapeutic antibody drugs (in Phase I to BLA), as well as an internal pipeline of proprietary imaging agents for unmet clinical needs – particularly for staging metastatic prostate and pancreatic cancer*.

“ImaginAb’s strategy of harnessing the explosive growth in the antibody space to build an in vivo diagnostics program is best in class and has yielded product pipelines that will have major impact on the clinical management of cancer and autoimmune diseases,” said Campbell Murray, M.D., Managing Director of Novartis Venture Funds. “The company also has the potential to profoundly change the way companion diagnostics are used in drug development and patient selection…”

ImaginAb [web]
Momentum Biosciences [web]
Novartis Venture Funds [web]

Start-Ups In L.A.: Growing Scene Is Almost Famous

Computer science students graduating from UCLA don’t just want jobs, they want to be Steve Jobs

From Forbes:

“In a way, it’s a Hollywood story. Young-ish hopefuls, vying for the attention and dollars of larger, older, more experienced agents (of sorts), who will bring money, connections, and attention their way, launching their careers.

Only the players here don’t want to be actors. They’re starting businesses. Start-ups in Los Angeles — they are a growing population of social media riffs, mobile apps, cleverly-named development companies, video platforms, and every shade of web curation all competing for dollars in a company town.

Evidence of the growing zeitgeist was on display Tuesday night at Start Engine, Los Angeles’ largest accelerator, as they hosted their inaugural Investor Demo Day, at which their ten new companies presented ideas in 5-minute pitches.

This group was the first batch of start-ups Start Engine has sent through its 90-day fast-track program. Created by Activision co-founder Howard Marks and Bristol Capital Advisors founder Paul Kessler, Start Engine is aiming to make L.A. a top tech entrepreneur city…”

Start Engine [web]

Untangling The Real Meaning Of “First-To-File” Patents

The first-to-file provision will apply to patent applications with an effective filing date of March 16, 2013, or later.

From FastCompany:

“The most widely discussed feature of the American Invents Act (AIA) is the impending replacement of the longstanding “first-to-invent” system with what is commonly–and somewhat inaccurately–called a “first-to-file” system. The first-to-file provision will apply to patent applications with an effective filing date of March 16, 2013, or later. In the fast-moving world of technology companies, that might seem like a lifetime in the future.

But there are at least three very good reasons to start planning for this change now.

First, the new first-to-file system will fundamentally alter the role of public “disclosures” in preserving the patentability of an invention. Disclosures can include presentations and demonstrations at trade shows, official postings on company websites, and even unauthorized postings by company employees on social networking sites. For all but the smallest companies, it will take significant time to ensure that everyone who communicates with the outside world about company technology–including executives, managers, marketers, developers, and salespeople–is fully aware of the new landscape regarding disclosures.

Second, a company can use the time between now and March 16, 2013, to file patent applications that will be pending during the transition from first-to-invent to first-to-file. As I’ll discuss in a later post, that presents the opportunity to create some very interesting and potentially valuable options with respect to downstream patent applications.

Third, the first-to-file system will create some new exposures with respect to intellectual property (IP) security. In a future post, I’ll discuss the nature of these exposures and some steps that companies can take to help reduce the risk of becoming victims of IP theft…”

USPTO America Invents Act Implementation [web]

UCLA Startup, Sofie Biosciences, Awarded US Patent on Novel PET Probes for Use in Oncology and Immunology

Sofie has obtained an exclusive license from The Regents of the University of California. Three investigational new drug (IND) applications have been approved for [18F]FAC and two analogs, and clinical trials have been initiated.

From MarketWatch:

“CULVER CITY, Calif., Jan. 24, 2012 /PRNewswire via COMTEX/ — Sofie Biosciences, Inc., offering a comprehensive range of products from pre-clinical PET imaging systems to new PET molecular imaging probes to better understand human disease, has been told that a U.S. Patent (8,101,740) will be granted by the United States Patent Office on technology that has been exclusively licensed to Sofie. The patent covers a family of novel PET probes, known as [18F]FAC.

Positron Emission Tomography (PET) is a molecular imaging technology that utilizes minute amounts of labeled molecules (“probes”) to target and measure biological and pharmacological processes. Basic scientists can use the same probes to examine cells and mice, as physicians do in patients to visualize and characterize the biology of disease, monitor its progression, and evaluate therapeutic efficacy…”

Sophie Biosciences [web]
U.S. Patent 8,101,740 [web]

NIH Launches New Invention Licensing Program for Startups, Entrepreneurs

These new NIH-Start-up Licenses minimize the barriers to entry faced by start-up companies under exclusive licenses and provide a structure that encourages and supports the commercial development of early stage NIH and FDA technologies.

Via NIH TechTransfer Office:

The National Institutes of Health (NIH) through the Office of Technology Transfer has developed a new short-term exclusive Start-Up Evaluation License Agreement (Start-up EELA) and a Start-up Exclusive Commercial License Agreement (Start-up ECLA) to facilitate licensing of intramural NIH and Food and Drug Administrative (FDA) inventions to start-up companies.

These new NIH Start-up Licenses are offered to assist start-up companies less than 5 years old, less than $5M in capital raised, and with fewer than 50 employees to obtain an exclusive license from the NIH for early stage biomedical inventions. These Start-Up Licenses will be offered to companies developing drugs, vaccines or therapeutics from NIH or FDA patented or patent pending technologies.

The start-up company must license at least one US patent and commit to developing a product or service for the US market. They may also include in the license related NIH/FDA patents filed in other countries if they commit to bringing products to markets in those countries as well.

The program will be offered during FY2012 – October 1, 2011 through September 30, 2012 – after which time, it will be evaluated for its success and possible extension. Companies can identify technologies of interest by searching Licensing Opportunities and follow through with the listed contact.

For general questions about this program, please contact Richard Rodriguez, Director, Division of Technology Development and Transfer, OTT at


Search NIH Technologies [web]
NIH Licensing Termsheet for Startups [web; doc]