On Saturday, around 18 months after President Obama signed it into law, the Leahy-Smith America Invents Act will take effect. Ostensibly, the act is designed to bring U.S. patent law in line with the rest of the world. Of course, not everybody feels it will help achieve the patent system's goal of protecting inventors while fostering innovation, and its effect could be even more pronounced on the DIY inventor.
Although the act includes a number of small changes, the meat of it is considered the biggest shakeup at the USPTO since 1952. Formally known as H.R. 1249, the act was penned by Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX), the duo who introduced the Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA). For product designers and makers and DIYers the proverbial monkey wrench is being thrown into the mechanism for filing a patent -- and the timing with which you do so. Today, if you file a patent, someone can come along and tell you they had that idea first, and with much documentation and legal wrangling, deny you the right to apply that invention. Tomorrow, nobody will care who came up with the idea first -- only who filed it.
It's called "First to File" (as opposed to the previous "First to Invent") and it shifts the system's emphasis from the date it was invented to the date its inventor dropped an application at the patent office. (It does preclude stolen ideas; it's been more accurately termed "First Inventor to File.")
"It's a big deal, and all the patent attorneys I know are busy right now, filing applications before that goes into effect, Saturday, which tells me that most of their clients are better off under the old system," says Robert Barr, a professor of intellectual property law at UC-Berkeley, though he adds that some of the rush is simply due to uncertainty about how the new law will play out.
"Under the old system, if you kept lab notebooks ... you could prove you were the first inventor even if you were not the first to file, so you didn't necessarily have to be the first to get to the patent office," he says. "Now, with a few exceptions, you need to be the first. If two people come up with the same invention, and they often do ... it's not going to matter if you can prove you were the first inventor if you weren't the first to file."
Supporters of the law say that, in addition to aligning U.S. law with the rest of the world, the act will speed up patent review and cut down on the backlog of applications. The patent office offers steep discounts to small businesses, and under the new law will offer steeper discounts to entities with fewer than four patents. But the majority of the cost of a patent remains in the fees associated with having it written up by a qualified lawyer, and opponents worry that first-to-file will favor big companies that can afford to apply for more patents, more quickly.
"If you're working out of your basement, you make a decision, hey I came up with something clever, now I got to scrape together some money to hire an attorney," says Jonathan Withrow, a partner at IP law firm Rankin, Hill & Clark. "You may not file an application 'cause you don't have the money." And that leaves the door open for someone else to file.
"Will it happen that often?" says Withrow. "I doubt it. Does it happen that often now? I don't think so. But it's a possibility."
It's trendy to frame first-to-file as a race to the patent office -- and not totally wrong.
"Now it's really important to be the first to file, and it's really important to file before somebody else puts a product out, or puts the invention in their product," says Barr, adding that it will "create a new urgency on the part of everyone to file faster -- and that's going to be a problem for the small inventor."
Of course, as with any new law, you never know quite how it's going to be enforced until the judicial system gets its hands on it, and so it'll be months or years before the particulars are straightened out. But Alex Lee, president of product development firm OXO, which licenses designs from individual inventors, says it primarily encourages faster filing, at the expense of refining a patent -- and its ever-important claims -- and maximizing the 20-year protection period.
"I don't think it's changed our behavior in a huge way," says Lee. "It certainly simplifies things a lot from a litigation perspective. In the past, if we have a patent issued to us, some person, some company can still claim, hey, we had that invention a year prior to your filing date -- it's all documented on our sketch pad. Then we have to go back and figure out, even though we filed it on this date, whether our invention actually happened more than a year prior to that. So it's a big kind of argument about who came up with the idea first."
There are a few additional complications from the act. Public disclosure starts a one-year grace period that allows inventors to wait to file, but most of the world does not acknowledge this period, so using it could preclude filing in other countries. There will be some changes to what constitutes disclosure, though Barr says it remains to be seen how disclosure is defined in practice. Anything on sale, or publicly disclosed anywhere in the world is considered prior art. And a third-party review takes disputed patents directly before a panel of judges dedicated to evaluating the patents' legitimacy, rather than just a single patent examiner.
It's not a simple situation -- the term "morass" would be appropriate -- but Fast Company last year published a guide to the act, the USPTO is hosting a public forum and webinar today from 1 to 4 pm EST, and the ambitious can read it in its entirety at the Library of Congress website.
Meanwhile, everyone's favorite villain probably won't be affected at all.
"I don't think there's anything in the bill that helps fight patent trolls, and I think that's really disappointing," says Barr. "It should have, and if it was designed a little differently it would."
