America Invents Act
Encyclopedia
The Leahy-Smith America Invents Act (AIA) is a United States
federal statute that was passed by Congress and was signed into law by President
Barack Obama
on September 16, 2011. The law represents the most significant change to the U.S. patent system since 1952, and closely resembles previously proposed legislation in the Senate in its previous session (Patent Reform Act of 2009
).
The Act switches the U.S. patent system from a "first to invent" to a "first to file" system
, eliminates interference proceedings, and develops post-grant opposition.
(D-VT) introduced similar bill in the United States Senate
on January 25, 2011, with seven co-sponsors (also members of the Judiciary Committee) that include Senators Coons (D-DE), Grassley (R-IA), Hatch
(R-UT), Klobuchar
(D-MN), Kyl
(R-AZ), Lieberman (I-CT), and Sessions
(R-AL). The Judiciary Committee unanimously approved the bill, and the United States Senate
passed it March 8, 2011, by a vote of 95–5. H.R. 1249: was passed by the House Judiciary Committee on April 14, 2011, by a vote of 32-3.
The House of Representatives passed their version of the Act on June 23, 2011 by a vote of 304-117, with sixty-seven Republicans and fifty Democrats voting against the bill.
On September 8, 2011, the Senate approved the House version by an 89-9 bipartisan vote. On September 16, 2011, President Barack Obama
signed the bill into law at a ceremony at Thomas Jefferson High School for Science and Technology
in Northern Virginia
.
" system to a "first-to-file
" system for patent applications filed on or after March 16, 2013 The law also expands the definition of prior art used in determining patentability. Actions and prior art that bar patent will include public use, sales, publications, and other disclosures available to the public as of the filing date, other than publications by the inventor
within one year of filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent application. The law also notably expands prior art to include foreign offers for sale and public uses. Applicants that do not publish their inventions prior to filing will receive no grace period. The proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention ("interference proceeding
s") are repealed, because priority will be determined based on filing date. An administrative proceeding—called a “derivation” proceeding, similar to that currently used within some interference proceedings is provided to ensure that the first person to file the application is actually an original inventor and that the application was not derived from another inventor.
The AIA refers to the new regime as "First-Inventor-to-File (FITF)." This new regime operates differently than the "First-to-Invent" (FTI) regime in the US and the various "First-to-File" (FTF) regimes in place in the rest of the world. An analysis of the differences between FTI, FTF, the original FITF, and the regime in the current bill was performed for some 200 different typical fact patterns involving the actions and timing of two different inventors in terms of whether and how each would publish or file patent applications. The comparison demonstrates the different outcomes that can occur under each of the four different regimes.
reexamination and renames it inter partes review, and adds post-grant review.
Savings from small entity (prior to act, based on small entity fees & includes 15% surcharge), to micro entity (post act):
% Net Savings for the new Micro Entity over Prior Small Entity Inventor = 42%
Proponents of the bill suggest that technology companies are subject to an unprecedented wave of patent lawsuits, stifling innovation and creating an overburdened and lethargic patent system. Advocates for the America Invents Act argue that it will create jobs, bolster innovation, streamline the patent system, reduce patent litigation, and keep the U.S. competitive globally.
Opponents of the Bill contend that it will lead to results similar to other nations' patent systems on which the bill is modeled — market incumbents will become further entrenched, the rate of startup formation will fall to levels in other countries, and access to angel and venture capital will fall to the levels of other countries, as described in the Impact of the Changes section below. A startup which relies on patents for protection from competitive risk, will, under the Bill, lose the protections of today's law to assemble the capital, strategic partners, and time for R&D and testing. The startup, exposed to the risk of copying by an established player in the marketplace, will be unable to attract venture capital, and so will lack the financial resources necessary to commercialize the startup’s invention and grow the company. The weakening of patent protection diminishes incentives for investments and development.
In addition, opponents of the bill point out that the proposed revisions create greater options for accused infringers, and weaken the rights of patentees, and that patent reform should remain in the hands of the court system. Opponents argue that patent reform should be confined to administrative reforms at the USPTO. The time, effort and money that will be spent after issuance under the Bill on inter partes review and post-grant review would be better spent improving initial examination. According to patent attorney and reexamination specialist Taraneh Maghame, “the root of the problem trying to be addressed by the reexamination process could be better solved if quality patents are issued in the first instance.”
Opponents contend that a "first-to-file" system favors larger firms with well-established internal patenting procedures, patent committees and in-house attorneys over small business inventors. They claim that, in a novel and perverse way found in no other country, the Act would weaken patent protection only in America. Opponents also submit that it will (i) cause loss of patent rights due to new prior art published after the invention date but before the filing date, (ii) weaken the current grace period so it cannot be relied on, compelling inventors to behave as if there were no grace period, (iii) replace "interferences" with costly derivation proceedings, which are generally even more expensive than interferences, (iv) create a “race to the Patent Office” with every new idea, increasing the number of patent applications filed, with the attendant costs in attorney fees and diversion of company personnel to patent application preparation, (v) increase examination backlogs at the USPTO
, (vi) do nothing to reduce U.S. applicants’ costs of acquiring patents outside of the U.S., and (vii) decrease average patent quality.
It was found that the proposed new regime behaves more like a new and unique kind of patent system with characteristics of both the FTI and FTF regimes, rather than a harmonized system sharing characteristics of both.
Opponents point out that under First-to-Invent, a company with extensive resources can choose to practice First-to-File, by simply racing to the patent office as soon as every invention is conceived, eliminating any need to keep records of invention conception. Meanwhile, a company with limited resources can take still utilize First-to-Invent, only filing patents that matter after funding is obtained. Under First-(Inventor)-to-File, the reverse is not true: all parties, regardless of their resources, must adhere to “race to the patent office”. This places small entities at an enormous disadvantage to large entities.
There is a question of whether changing to FTF would be constitutional. Article I, Section 8 of the Constitution states:
“To promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their respective ... Discoveries.”
The term "inventor" means "the first to invent." "To invent" means "to create something that has not existed before." Therefore, by the standard definitions of our language, adoption of FTF would require amending the constitution. All peer-reviewed papers published in scholarly journals have found this or similar problems.
Canada changed from FTI to FTF in 1989 and experienced a measurable "adverse effect on domestic-oriented industries and skewed the ownership structure of patented inventions towards large corporations, away from independent inventors and small businesses."
review under the Bill allows a third party to challenge the validity of any claim(s) in a patent *after* the first year; (b) re-exams are in fact used, not as an alternative to litigation, but rather as a supplement to litigation. In FY2008, 62% of current inter partes re-exams and 30% of ex parte re-exams were simultaneously in litigation; (c) predatory corporations can and do file multiple post-grant oppositions against startup companies for the purpose of inflicting financial pain and through this practice have successfully extracted patent licensing and purchase agreements on favorable terms; (d) the existing inter partes
process in a contested case now takes 34 to 53 months for an un-appealed reexam (assuming no “rework” by the patent office and no secondary appeals to the BPAI, the Federal Circuit, or the Supreme Court), and 5 to 8 years for appealed cases. When Congress created inter partes reexamination, it directed the USPTO to conduct these reexaminations with "special dispatch." The Bill expands the existing inter partes procedure, adding
discovery and a hearing in the Patent Trial and Appeal Board. Consequently, under the Bill, pendency of the inter partes procedure will likely increase, despite the legislative fiat requiring 18 month disposition;
and (e) the Bill all but requires a federal district court to stay a patent infringement suit copending with an inter partes review. Because of the enormous costs and long pendency of inter partes review, the grant of a stay in a copending infringement suit can effectively be "game over" for the patent owner.
The use of reexamination, or the threat of its use, in licensing negotiations or in patent infringement litigation is common. “[G]amesmanship of the reexamination process has, in the view of some, become more the rule than the exception. Reportedly it has become ‘standard procedure’ that a defendant in patent litigation ‘take an aggressive stance by saying it plans to request a re-exam on the patent-in-suit or even all’ of the plaintiffs patents. The threat of reexamination is then used as leverage in licensing negotiations, intimidating patent-holders into settling out of court for lower amounts than those to which the value of their patents might entitle them.” The practice is widespread and growing. Reexamination requests from companies accused of patent infringement have recently more than tripled. “Ironically, Congress intended that the reexamination process should have just the opposite effect: "Patent office reexamination will greatly reduce, if not end, the threat of legal costs being used to 'blackmail' such [patent-] holders into allowing patent infringements or being forced to license their patents for nominal fees."
Critics argue that the Act will accelerate the decline of the U.S. as an industrial power because it will prevent startups from raising capital. To understand why this is so, one needs to understand the basic life cycle of a startup. In the first step of this life cycle, an inventor or group of inventors conceives the invention. Second, the inventors undertake limited prototyping and testing sufficient to convince themselves and potential investors that the invention will work, not just in the lab, but in practice. Third, the inventors research the market and write a business plan estimating (a) a revenue stream based on forecast demand for the envisioned product at a specific target price, and (b) the capital needed to reach the break-even point, i.e. the point in time when revenues will equal expenses so that the startup will be self-funding. Fourth, potential investors scrutinize the business plan including evaluating competitive risk. By definition, a startup is a new entrant to the marketplace. The startup has no established brand, and no established sales, distribution, or service channels. It is only after this point that an investor typically invests, and thus this is the point at which a typical inventor has a sufficient conception of the invention and funding to be able to file a patent application.
Proponents argue that the Act provides numerous benefits to small businesses.
In contrast, in Europe, the practice is that investors will not talk to inventors until before the "Fourth" step of the preceding paragraph, that is, before funding exists to pay a patent attorney.
Opponents of the Bill contend that, if the bill becomes law, venture funding will be diverted to
less risky investments. Therefore startups, the primary source of inventions, will be unable to raise funding to commercialize their inventions. Over time, and compounding year on year, the
decrease in economic growth and the failure to commercialize innovative, disruptive technologies
will accelerate the economic decline of the United States relative to competing
nations.
Proponents of the Bill argue that revision of both post grant opposition and interference will help US inventors. They point out that a patent that has survived a post-grant review will be stronger than one without. Neither side has put forward a cost-benefit balance showing that the added strength of these patents will compensate for the loss of access to venture capital, though the venture capitalists that have opined on the likely balance have concluded that the post-grant review will reduce access to capital more than it increases patent strength.
and Microsoft. USPTO Director David Kappos
represented IBM, and Marc Berejka (Senior Policy Advisor, Office of the Secretary, U.S. Department of Commerce) lobbied on behalf of Microsoft on these very issues, and that their appointments were a violation of the Obama Administration's "Revolving Door
Ban". Secretary of Commerce Gary Locke
, to whom the USPTO reported until Locke was made Ambassador to China on August 1, 2011, also has extensive ties to Microsoft.
Opponents have raised the concern that the Law of Unintended Consequences could result in outcomes that cause the USA to lose its leadership position in innovation, particularly as a result of the adverse impact on small companies, who have not been represented in the negotiations leading up to this bill. Also, critics complain that this bill will not do enough to curb “non-practising entities” from engaging in Patent Trolls behaviors.
Critics have pointed out that the new bill fails to address a glaring issue that will seemingly continue to exist under the new system, the extensive backlog of existing patent applications. Instead of hiring more examiners to process this backlog, "...Congress chose to multiply the alternative dispute-resolution procedures at the PTO, giving the office more work to do without a guarantee of more money. The result is a muddle as well as a missed opportunity."
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
federal statute that was passed by Congress and was signed into law by President
President of the United States
The President of the United States of America is the head of state and head of government of the United States. The president leads the executive branch of the federal government and is the commander-in-chief of the United States Armed Forces....
Barack Obama
Barack Obama
Barack Hussein Obama II is the 44th and current President of the United States. He is the first African American to hold the office. Obama previously served as a United States Senator from Illinois, from January 2005 until he resigned following his victory in the 2008 presidential election.Born in...
on September 16, 2011. The law represents the most significant change to the U.S. patent system since 1952, and closely resembles previously proposed legislation in the Senate in its previous session (Patent Reform Act of 2009
Patent Reform Act of 2009
The Patent Reform Act of 2009 was a set of proposals introduced in the 111th United States Congress for changes in United States patent law. Senators Orrin Hatch and Patrick Leahy introduced a Senate bill on March 3, 2009. Representative John Conyers introduced the House version, H.R. 1260, the...
).
The Act switches the U.S. patent system from a "first to invent" to a "first to file" system
First to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
, eliminates interference proceedings, and develops post-grant opposition.
Legislative response and history
Senator Patrick LeahyPatrick Leahy
Patrick Joseph Leahy is the senior United States Senator from Vermont and member of the Democratic Party. He is the first and only elected Democratic United States Senator in Vermont's history. He is the chairman of the Senate Judiciary Committee. Leahy is the second most senior U.S. Senator,...
(D-VT) introduced similar bill in the United States Senate
United States Senate
The United States Senate is the upper house of the bicameral legislature of the United States, and together with the United States House of Representatives comprises the United States Congress. The composition and powers of the Senate are established in Article One of the U.S. Constitution. Each...
on January 25, 2011, with seven co-sponsors (also members of the Judiciary Committee) that include Senators Coons (D-DE), Grassley (R-IA), Hatch
Orrin Hatch
Orrin Grant Hatch is the senior United States Senator for Utah and is a member of the Republican Party. Hatch served as the chairman or ranking member of the Senate Judiciary Committee from 1993 to 2005...
(R-UT), Klobuchar
Amy Klobuchar
Amy Jean Klobuchar is the senior United States Senator from Minnesota. She is a member of the Minnesota Democratic-Farmer-Labor Party, an affiliate of the Democratic Party...
(D-MN), Kyl
Jon Kyl
Jon Llewellyn Kyl is the junior U.S. Senator from Arizona and the Senate Minority Whip, the second-highest position in the Republican Senate leadership. In 2010 he was recognized by Time magazine as one of the 100 most influential people in the world for his persuasive role in the Senate.The son...
(R-AZ), Lieberman (I-CT), and Sessions
Jeff Sessions
Jefferson Beauregard "Jeff" Sessions III is the junior United States Senator from Alabama. First elected in 1996, Sessions is a member of the Republican Party...
(R-AL). The Judiciary Committee unanimously approved the bill, and the United States Senate
United States Senate
The United States Senate is the upper house of the bicameral legislature of the United States, and together with the United States House of Representatives comprises the United States Congress. The composition and powers of the Senate are established in Article One of the U.S. Constitution. Each...
passed it March 8, 2011, by a vote of 95–5. H.R. 1249: was passed by the House Judiciary Committee on April 14, 2011, by a vote of 32-3.
The House of Representatives passed their version of the Act on June 23, 2011 by a vote of 304-117, with sixty-seven Republicans and fifty Democrats voting against the bill.
On September 8, 2011, the Senate approved the House version by an 89-9 bipartisan vote. On September 16, 2011, President Barack Obama
Barack Obama
Barack Hussein Obama II is the 44th and current President of the United States. He is the first African American to hold the office. Obama previously served as a United States Senator from Illinois, from January 2005 until he resigned following his victory in the 2008 presidential election.Born in...
signed the bill into law at a ceremony at Thomas Jefferson High School for Science and Technology
Thomas Jefferson High School for Science and Technology
Thomas Jefferson High School for Science and Technology is a Virginia state-chartered magnet school located within Fairfax County, Virginia, United States...
in Northern Virginia
Virginia
The Commonwealth of Virginia , is a U.S. state on the Atlantic Coast of the Southern United States. Virginia is nicknamed the "Old Dominion" and sometimes the "Mother of Presidents" after the eight U.S. presidents born there...
.
First to file and grace period
The law will switch U.S. rights to the patent from the present "first-to-inventFirst to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
" system to a "first-to-file
First to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
" system for patent applications filed on or after March 16, 2013 The law also expands the definition of prior art used in determining patentability. Actions and prior art that bar patent will include public use, sales, publications, and other disclosures available to the public as of the filing date, other than publications by the inventor
Inventor (patent)
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention and its case law, no explicit, accurate definition of who exactly is an...
within one year of filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent application. The law also notably expands prior art to include foreign offers for sale and public uses. Applicants that do not publish their inventions prior to filing will receive no grace period. The proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention ("interference proceeding
Interference proceeding
An interference proceeding, also known as priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. It is a unique procedure in the patent law of the United States. Unlike in most other countries which have adopted the first-to-file system,...
s") are repealed, because priority will be determined based on filing date. An administrative proceeding—called a “derivation” proceeding, similar to that currently used within some interference proceedings is provided to ensure that the first person to file the application is actually an original inventor and that the application was not derived from another inventor.
The AIA refers to the new regime as "First-Inventor-to-File (FITF)." This new regime operates differently than the "First-to-Invent" (FTI) regime in the US and the various "First-to-File" (FTF) regimes in place in the rest of the world. An analysis of the differences between FTI, FTF, the original FITF, and the regime in the current bill was performed for some 200 different typical fact patterns involving the actions and timing of two different inventors in terms of whether and how each would publish or file patent applications. The comparison demonstrates the different outcomes that can occur under each of the four different regimes.
Opposition procedures
The Act revises and expands opposition procedures. The Act retains existing ex parte reexamination, adds preissuance submissions by third parties, expands inter partesInter partes
The term inter partes is the Latin for "between the parties." It can be distinguished from in rem, referring to a legal action whose jurisdiction is based the control of property, or ex parte referring to a legal action that is by a single party....
reexamination and renames it inter partes review, and adds post-grant review.
Additional changes
The America Invents Act included the following changes:- Tax strategy inventions. Provides that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.
- False marking. Eliminates false marking lawsuits except for ones filed by the U.S. government or filed by a competitor who can prove competitive injury. In addition, marking a product with a patent that formerly covered the product, but has since expired, is no longer a violation.
- Filing by other than inventor. An entity can file an application on behalf of an inventor who assigned or is under an obligation to assign the invention rights to the entity (or if the entity otherwise has financial interest in the invention), without seeking the inventor's execution of the application. Any patent that issues belongs to the inventor absent a written assignment from the inventor or inventor's estate to the entity.
- Best mode. While an inventor is still required to “set forth” the best modeSufficiency of disclosureMost patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
for accomplishing the invention, failure to disclose a best mode is not a basis for invalidating or rendering unenforceable an issued patent. By formally keeping the best mode requirement in the patent law, but by eliminating it as a defense to patent infringement and by therefore making it unenforceable in court, the America Invents Act has left many patent lawyers wondering why the requirement was kept at all. - Prior user rights defense. If an individual/entity begins using an invention ('user') more than a year before a subsequent inventor files for a patent on the same invention, then the user will have the right to continue using the invention in the same way after the subsequent inventor is granted a patent as long as the user did not derive the invention from the subsequent inventor. These prior user rights are limited in scope and transferability, and they also have limited applicability to patents held by universities.
- Micro-entity. The AIA added a micro-entity status. A micro-entity includes an independent inventor with a previous calendar year gross income of less than 3 times the national median household income who has previously filed no more than four non-provisional patent applications, not including those the inventor was obligated to assign to an employer. A micro-entity also includes a university or an inventor under an obligation to assign the invention to a university. A micro-entity is entitled to a 75% reduction in many of the patent fees payable to the US Patent Office during prosecution of a US patent application. The patent office is expected to develop regulations to identify which fees will be eligible for the reduction and how joint inventors may qualify as a micro-entity.
- Confidential Sale. Provides that confidential sales of products containing the patented technology will no longer mark the beginning of the 1 year period to file the patent.
Savings from small entity (prior to act, based on small entity fees & includes 15% surcharge), to micro entity (post act):
| USPTO Fee Type* | Before | After | Difference |
|---|---|---|---|
| Basic Utility Fee | $165 | $95 | $70 |
| Utility Search Fee | $270 | $155 | $115 |
| Utility Exam Fee | $110 | $63 | $48 |
| Issue Fee | $755 | $435 | $320 | 3.5 Year Fee | $490 | $283 | $208 | 7.5 Year Fee | $1240 | $713 | $528 | 11.5 Year Fee | $2,055 | $1,183 | $873 | ***** | ***** | ***** | ***** | TOTALS | $5,085 | $2,925 | $2,160 |
% Net Savings for the new Micro Entity over Prior Small Entity Inventor = 42%
USPTO practice changes
- Fee Setting Authority. The USPTO would be given authority to adjust its fees in a way that "in the aggregate" recover the estimated costs of its activities.
- Review of inter partes reexamination. Direct appeal to the Federal Circuit is the only option for judicial review in inter partes reexamination cases.
- Additional USPTO facilities. Establishes additional USPTO satellite offices, the first of which will be located in Detroit, Michigan.
- Third-party submission of prior art. Third-parties may submit prior artPrior artPrior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
in published application if submitted prior to the later of: the mailing date of the first office action, or six months after publication.
Reactions during bill's pendency
Proponents of the bill argue that it may even the playing field by removing the tricks a well-funded infringer can currently use against a startup owning patented technology.Proponents of the bill suggest that technology companies are subject to an unprecedented wave of patent lawsuits, stifling innovation and creating an overburdened and lethargic patent system. Advocates for the America Invents Act argue that it will create jobs, bolster innovation, streamline the patent system, reduce patent litigation, and keep the U.S. competitive globally.
Opponents of the Bill contend that it will lead to results similar to other nations' patent systems on which the bill is modeled — market incumbents will become further entrenched, the rate of startup formation will fall to levels in other countries, and access to angel and venture capital will fall to the levels of other countries, as described in the Impact of the Changes section below. A startup which relies on patents for protection from competitive risk, will, under the Bill, lose the protections of today's law to assemble the capital, strategic partners, and time for R&D and testing. The startup, exposed to the risk of copying by an established player in the marketplace, will be unable to attract venture capital, and so will lack the financial resources necessary to commercialize the startup’s invention and grow the company. The weakening of patent protection diminishes incentives for investments and development.
In addition, opponents of the bill point out that the proposed revisions create greater options for accused infringers, and weaken the rights of patentees, and that patent reform should remain in the hands of the court system. Opponents argue that patent reform should be confined to administrative reforms at the USPTO. The time, effort and money that will be spent after issuance under the Bill on inter partes review and post-grant review would be better spent improving initial examination. According to patent attorney and reexamination specialist Taraneh Maghame, “the root of the problem trying to be addressed by the reexamination process could be better solved if quality patents are issued in the first instance.”
First to file and grace period
Proponents of the AIA submit that it would simplify the application process and bring U.S. patent law into better harmony with the patent law of other countries, most of which operate on the "first-to-file" system. Proponents also claim that it would eliminate costly interference proceedings at the USPTO and reduce U.S. applicants’ disadvantages in seeking patent rights outside of the United States.Opponents contend that a "first-to-file" system favors larger firms with well-established internal patenting procedures, patent committees and in-house attorneys over small business inventors. They claim that, in a novel and perverse way found in no other country, the Act would weaken patent protection only in America. Opponents also submit that it will (i) cause loss of patent rights due to new prior art published after the invention date but before the filing date, (ii) weaken the current grace period so it cannot be relied on, compelling inventors to behave as if there were no grace period, (iii) replace "interferences" with costly derivation proceedings, which are generally even more expensive than interferences, (iv) create a “race to the Patent Office” with every new idea, increasing the number of patent applications filed, with the attendant costs in attorney fees and diversion of company personnel to patent application preparation, (v) increase examination backlogs at the USPTO
Backlog of unexamined patent applications
Although not clearly defined, the backlog of unexamined patent applications consists, at one point in time, in all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and, as of 2009, it reportedly continues to grow...
, (vi) do nothing to reduce U.S. applicants’ costs of acquiring patents outside of the U.S., and (vii) decrease average patent quality.
It was found that the proposed new regime behaves more like a new and unique kind of patent system with characteristics of both the FTI and FTF regimes, rather than a harmonized system sharing characteristics of both.
Opponents point out that under First-to-Invent, a company with extensive resources can choose to practice First-to-File, by simply racing to the patent office as soon as every invention is conceived, eliminating any need to keep records of invention conception. Meanwhile, a company with limited resources can take still utilize First-to-Invent, only filing patents that matter after funding is obtained. Under First-(Inventor)-to-File, the reverse is not true: all parties, regardless of their resources, must adhere to “race to the patent office”. This places small entities at an enormous disadvantage to large entities.
There is a question of whether changing to FTF would be constitutional. Article I, Section 8 of the Constitution states:
“To promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their respective ... Discoveries.”
The term "inventor" means "the first to invent." "To invent" means "to create something that has not existed before." Therefore, by the standard definitions of our language, adoption of FTF would require amending the constitution. All peer-reviewed papers published in scholarly journals have found this or similar problems.
Canada changed from FTI to FTF in 1989 and experienced a measurable "adverse effect on domestic-oriented industries and skewed the ownership structure of patented inventions towards large corporations, away from independent inventors and small businesses."
Judicial review of reexamination decisions
Opponents note that the bill contains a provision that would deny the right of patent owners to obtain judicial review of adverse USPTO decisions in ex parte patent reexaminations by civil action in district court – a right that has existed under / § 145 since the inception of reexamination in 1980. They contend that abolishing this right will leave direct appeal to the Federal Circuit as the only judicial recourse – an intolerable scenario for patent owners who need to rely on evidence that was unavailable during the administrative appeal stage. Opponents contend that this provision will exacerbate ex parte reexamination abuses by creating an unprecedented end-run around Federal District Courts in potentially all patent disputes. They warn that alleged infringers would simply file ex parte reexamination requests with USPTO, receive a final agency decision subject only to Federal Circuit review, essentially bypassing Federal courts. Opponents fear that given the deference the Federal Circuit must accord the agency (Zurko), large number of prospective/alleged infringers would choose this new favorable path to challenge a patent, overwhelming the USPTO, causing much lengthier delays in reexamination and holding up patentees' patent rights for years.Post-grant opposition
Advocates argue that allowing a challenge of a patent in the first year after the issuance or reissuance of a patent will improve patent quality by allowing third party inputs. Opponents note that: (a) inter partesInter partes
The term inter partes is the Latin for "between the parties." It can be distinguished from in rem, referring to a legal action whose jurisdiction is based the control of property, or ex parte referring to a legal action that is by a single party....
review under the Bill allows a third party to challenge the validity of any claim(s) in a patent *after* the first year; (b) re-exams are in fact used, not as an alternative to litigation, but rather as a supplement to litigation. In FY2008, 62% of current inter partes re-exams and 30% of ex parte re-exams were simultaneously in litigation; (c) predatory corporations can and do file multiple post-grant oppositions against startup companies for the purpose of inflicting financial pain and through this practice have successfully extracted patent licensing and purchase agreements on favorable terms; (d) the existing inter partes
Inter partes
The term inter partes is the Latin for "between the parties." It can be distinguished from in rem, referring to a legal action whose jurisdiction is based the control of property, or ex parte referring to a legal action that is by a single party....
process in a contested case now takes 34 to 53 months for an un-appealed reexam (assuming no “rework” by the patent office and no secondary appeals to the BPAI, the Federal Circuit, or the Supreme Court), and 5 to 8 years for appealed cases. When Congress created inter partes reexamination, it directed the USPTO to conduct these reexaminations with "special dispatch." The Bill expands the existing inter partes procedure, adding
discovery and a hearing in the Patent Trial and Appeal Board. Consequently, under the Bill, pendency of the inter partes procedure will likely increase, despite the legislative fiat requiring 18 month disposition;
and (e) the Bill all but requires a federal district court to stay a patent infringement suit copending with an inter partes review. Because of the enormous costs and long pendency of inter partes review, the grant of a stay in a copending infringement suit can effectively be "game over" for the patent owner.
Impact of the changes
Opponents of the Bill assert that the impact of the changes to the current law will be to effectively neuter the U.S. patent system. Patents owned by startup companies, research institutions, and independent inventors ("startups") will be unenforceable against large corporations.The use of reexamination, or the threat of its use, in licensing negotiations or in patent infringement litigation is common. “[G]amesmanship of the reexamination process has, in the view of some, become more the rule than the exception. Reportedly it has become ‘standard procedure’ that a defendant in patent litigation ‘take an aggressive stance by saying it plans to request a re-exam on the patent-in-suit or even all’ of the plaintiffs patents. The threat of reexamination is then used as leverage in licensing negotiations, intimidating patent-holders into settling out of court for lower amounts than those to which the value of their patents might entitle them.” The practice is widespread and growing. Reexamination requests from companies accused of patent infringement have recently more than tripled. “Ironically, Congress intended that the reexamination process should have just the opposite effect: "Patent office reexamination will greatly reduce, if not end, the threat of legal costs being used to 'blackmail' such [patent-] holders into allowing patent infringements or being forced to license their patents for nominal fees."
Critics argue that the Act will accelerate the decline of the U.S. as an industrial power because it will prevent startups from raising capital. To understand why this is so, one needs to understand the basic life cycle of a startup. In the first step of this life cycle, an inventor or group of inventors conceives the invention. Second, the inventors undertake limited prototyping and testing sufficient to convince themselves and potential investors that the invention will work, not just in the lab, but in practice. Third, the inventors research the market and write a business plan estimating (a) a revenue stream based on forecast demand for the envisioned product at a specific target price, and (b) the capital needed to reach the break-even point, i.e. the point in time when revenues will equal expenses so that the startup will be self-funding. Fourth, potential investors scrutinize the business plan including evaluating competitive risk. By definition, a startup is a new entrant to the marketplace. The startup has no established brand, and no established sales, distribution, or service channels. It is only after this point that an investor typically invests, and thus this is the point at which a typical inventor has a sufficient conception of the invention and funding to be able to file a patent application.
Proponents argue that the Act provides numerous benefits to small businesses.
In contrast, in Europe, the practice is that investors will not talk to inventors until before the "Fourth" step of the preceding paragraph, that is, before funding exists to pay a patent attorney.
Opponents of the Bill contend that, if the bill becomes law, venture funding will be diverted to
less risky investments. Therefore startups, the primary source of inventions, will be unable to raise funding to commercialize their inventions. Over time, and compounding year on year, the
decrease in economic growth and the failure to commercialize innovative, disruptive technologies
Disruptive technology
A disruptive technology or disruptive innovation is an innovation that helps create a new market and value network, and eventually goes on to disrupt an existing market and value network , displacing an earlier technology there...
will accelerate the economic decline of the United States relative to competing
nations.
Proponents of the Bill argue that revision of both post grant opposition and interference will help US inventors. They point out that a patent that has survived a post-grant review will be stronger than one without. Neither side has put forward a cost-benefit balance showing that the added strength of these patents will compensate for the loss of access to venture capital, though the venture capitalists that have opined on the likely balance have concluded that the post-grant review will reduce access to capital more than it increases patent strength.
Other issues
Critics of the bill have expressed concern that the administration has been guided by the same people who previously lobbied for patent reform on behalf of IBMIBM
International Business Machines Corporation or IBM is an American multinational technology and consulting corporation headquartered in Armonk, New York, United States. IBM manufactures and sells computer hardware and software, and it offers infrastructure, hosting and consulting services in areas...
and Microsoft. USPTO Director David Kappos
David Kappos
David "Dave" J. Kappos is the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office . Prior to being confirmed to this post by the U.S. Senate on August 7, 2009, Kappos was the vice president and assistant general counsel, intellectual...
represented IBM, and Marc Berejka (Senior Policy Advisor, Office of the Secretary, U.S. Department of Commerce) lobbied on behalf of Microsoft on these very issues, and that their appointments were a violation of the Obama Administration's "Revolving Door
Revolving door (politics)
The revolving door is the movement of personnel between roles as legislators and regulators and the industries affected by the legislation and regulation and on within lobbying companies. In some cases the roles are performed in sequence but in certain circumstances may be performed at the same time...
Ban". Secretary of Commerce Gary Locke
Gary Locke
Gary Locke may refer to:*Gary Locke , Chinese American politician; U.S. Secretary of Commerce and former Governor of Washington*Gary Locke *Gary Locke...
, to whom the USPTO reported until Locke was made Ambassador to China on August 1, 2011, also has extensive ties to Microsoft.
Opponents have raised the concern that the Law of Unintended Consequences could result in outcomes that cause the USA to lose its leadership position in innovation, particularly as a result of the adverse impact on small companies, who have not been represented in the negotiations leading up to this bill. Also, critics complain that this bill will not do enough to curb “non-practising entities” from engaging in Patent Trolls behaviors.
Critics have pointed out that the new bill fails to address a glaring issue that will seemingly continue to exist under the new system, the extensive backlog of existing patent applications. Instead of hiring more examiners to process this backlog, "...Congress chose to multiply the alternative dispute-resolution procedures at the PTO, giving the office more work to do without a guarantee of more money. The result is a muddle as well as a missed opportunity."