In September 2011, Congress passed and the president signed the Leahy-Smith America Invents Act (AIA) that changed the U.S. patent system to the party "first to file" instead of the “first to invent” to bring the U.S. in line with other countries who adopted first to file patent systems years ago, supposedly to simplify the patent process for companies that file applications in multiple countries. Its central provisions went into effect on September 16, 2012 and on March 16, 2013. Let's examine whether or not the America Invents Act has been beneficial or harmful to innovation by America's inventors and small businesses.
At the time, supporters said it would improve patent quality by creating a new process for reviewing patents after they have been issued and allow third parties to provide information on other parties' applications. Rep. Lamar Smith, R-Tex., who chaired the House Judiciary Committee, said the bill was “designed to help all inventors.” The current system "seriously disadvantages small inventors and companies" because it can lead to years of costly legal challenges to their patents, he added. Another supporter, Rep. Mike Michaud, D-Maine, said, “We need to make it easier for companies to innovate and make things here at home, and this bill does that."
Opponents argued that there was no reason to change the U.S. system, and inventors and small businesses complained that switching to a "first to file" system would give large companies an advantage and hurt individual inventors.
Rep. Jim Sensenbrenner, R-Wis., and Rep. John Conyers, D-Mich., opposed converting the U. S. patent system to a “first to file” system, but their amendments to strike this language were rejected. Conyers said the legislation would "benefit large multinationals at the expense of independent inventors and small businesses" and would "harm jobs, harm innovation and harm our nation."
An inventor is the odds on favorite to lose in today’s patent system.
Rep. Don Manzullo, R-Ill., voted against the bill and stated, “This bill would weaken our strong patent system that has protected American entrepreneurs for centuries from overseas companies trying to pirate their inventions.” Manzullo said, “Any patent reform we undertake should focus on reducing the backlog in patent applications, not dramatically altering the system and giving multinational corporations advantages over American innovators. The last thing we should be doing right now is giving foreign companies an even greater opportunity to take our ideas and our jobs.”
What has happened in the last two and a half years since the American Invents Act went into effect?
Paul Morinville of www.USInventor.org wrote, “An inventor is the odds on favorite to lose in today’s patent system. Since the America Invents Act created post grant opposition procedures (PGO), inventors have lost the large majority of patent cases. PGO’s invalidate patents at rates above 75%. Article III courts find patents invalid under the indefinable 'abstract idea' at similar rates. Today, inventors are losing more cases than at any time in the 224-year history of the U.S. patent system."
He added, "An infringement suit can cost millions of dollars for each side. Prior to the AIA, even small inventions could be enforced. With the huge increase in inventor losses due to the AIA and the indefinable “abstract idea,” only inventions with exceptionally large damages can be enforced. It's simple math, damages must exceed the cost of the case plus the cost of risk."
Patent Agent David B. Waller, J.D. M.S., Patent Success Strategies, LLC, commented, "Recent changes in the United States Patent Laws under the America Invents Act have had beneficial effects for some and significant disadvantages for others. In particular, changing from a first-to-invent to a first-to-file system, while conforming U.S. patent law to a worldwide standard with respect to ownership, has significantly impacted the exclusive rights granted to inventors through the U.S. Constitution and simultaneously impacted collaboration among research groups. The new Post Grant Opposition (PGO) procedures now provide an avenue to invalidate issued patents with resulting costs significantly lower for the challenger than the patent holder. This presents a distinct advantage for those with substantial resources to challenge patents that may directly compete with their technology. To compound an already problematic system, the Innovation Act that passed the House last year proposed provisions that while seemingly helpful to independent inventors, would have been detrimental. The provision that provided a losing party pay for an infringement suit created a substantial advantage for a party having the greater financial resources. This bill never passed the Senate, and in view of other potentially detrimental provisions of the AIA, it will be important to make changes in this law to readjust and balance the benefit for all inventors."
'Terrible Dilemma' for Small Inventor
Patent Agent George Levy explained some of the harmful effects of the America Invents Act: "The new law presents a terrible dilemma for the small inventor. He can't talk about his invention until the invention is filed (any competitor could simply publish the inventor's idea under the competitor's name, thereby locking the inventor out, or even worse, file a patent in their own name, with or without improvements) - The so called grace period is worthless. He can't file until he is funded, and he can't be funded because potential investors are scared of post grant reviews invalidating the granted patent. He does not have the funding to protect himself from a post grant review.
The whole "troll" idea is a red herring. In fact the biggest trolls or non-practicing entities are the large corporations whose legal departments make a point of erecting a picket fence around competitors. Note: "A well-known tactic to devalue a competitor’s patent is to create a “picket fence” around it. Using this tactic, a competitor attempts to surround the pioneering patent with many patents covering incremental innovations, thereby hindering freedom to operate or freedom to advance the technology along logical trajectories."
Levy added, "A single patent is granted to an inventor who cannot practice it because of lack of funding, and large corporations won't license the patent from him. However, if the patent interferes with the business of a corporation, the inventor is called a troll and his patent is subjected to post grant review…A large number of patents, called "picket-fence," are granted to a large corporation and grouped around a competitor's technology. The patents are specially designed to interfere with the competitor's business. Such strategies are commonly used by corporate legal teams."
At the San Diego Inventors Forum on February 12th, President Adrian Pelkus, said, "We are a nation of creators and builders living at a time when science and technology is exponentially enriching our quality of life. Disturbing the evolution of ideas disrupts our development as a society, and changes to our patent laws are doing just that. American inventors create new products and jobs. The more we enable inventors, the more our country prospers and the better our lives become. We can expect only the opposite if we if we stifle inventors by allowing laws to be passed by corporations pressuring our representatives to protect only their interests."
Thus, my answer is that the American Invents Act has been harmful to American innovation, and the consequences demonstrate that once again our elected representatives in Congress sold out to the interests of multinational corporations at the expense of inventors and small businesses.