Patent Attorney Breaks Down Impact of the America Invents Act

msmoriarty writes "As you probably heard, on Friday the Obama administration signed the America Invents Act, which changed our system to 'first to file.' Support for the bill itself was split in the tech industry: Microsoft and IBM (among others) supported the act, Google and Apple opposed it. Redmondmag asked a patent attorney to explain in detail the act and what impact he thinks it will have on the tech industry. According to him, there are still many open questions. From the article: 'The Act has not accomplished [first to file] harmonization in a straightforward or unambiguous way. For example, it is not clear whether a prior use or offer for sale of an invention by an inventor or joint inventor within a year of the date of filing would render the invention unpatentable.' He also said that the act clearly favors larger corporations, and he doubts it will speed up the patent process itself, which was one of its intended benefits."

Simple

[Mensa Babe]

Microsoft supported it, Google opposed it. What more proof do we need that this act is evil? Propably none and even if some then not much. Nevertheless the articles linked in this story even if not bad in content still may be quite hard to follow for anyone who hasn't got an opinion on this matter yet. You can find much more information in the Wikipedia article: Leahy-Smith America Invents Act [wikipedia.org] and even more in the articles linked in the references [wikipedia.org]. I strongly recommend reading it all because otherwise we risk to draw uneducated conclusions from the aspects of this story that may seem obvious but actually are not that obvious for anyone educated in the intellectual property law. Some of the implications of that act would be rather scary so we really need to take some time to fully research the subject and unlike the Redmondmag, the so called "independent voice of the Microsoft IT community", the Wikipedia is actually worth reading.

Re:Worst thing for America

[Anonymous Coward]

The trolls could do that before. What they could do before, and could not do now, is pre-date the invention by 364 days, so that they could show priority over you. Of course that would be perjury, but the USPTO stopped prosecuting perjury on patent applications when they disbanded their enforcement division for budget reasons in 1974. No prosecutions since then.

Filing a patent on someone else's invention is still itself perjury. Now, we just have to get them to prosecute that.

Re:why favor large corporations?

[Anonymous Coward]

Yes but, you're ignoring the fact that under the old law, you could think of the idea first, file a patent first, and STILL get the crap sued out of you by a large corporation that claimed they invented it first (" this internal memo from five years ago full of randomly strung together buzzwords clearly shows we invented it first") At least under the new regime, as long as you file first (and were an actual inventor, not someone who just copied an idea), you win. And that's more aligned with the spirit of patent law--we want to encourage people to publish as quickly as possible..

Re:Simple

[delt0r]

Considering that the rest of the world has had first to file since forever, i think you are wrong. The quality is no worse elsewhere than in the US.

Re:why favor large corporations?

[Anonymous Coward]

A few ways this favors large corporations:
1. The "internal commercial use" allows a company to escape being prosecuted if they documented the invention and use of a patententable item internally but did not disclose it to the public in a patent but kept it as a trade secret. This seems to benefit large companies. I also think It seems to be against the intent of the constitution. Presumably it is to prevent an employee with access to trade secrets from disclosing them to a third party who then patents them and sues the original inventing company for patent infringement.

2. He seems to say there is a new requirement to do surveilance shortly after the patent is issued to prevent people from utilizing your patent. I assume to prevent submarine patents. A small company may be developing the manufacturing, distribution, and sales parts of the company and may not have the resources to allocate to this. A large company will have a system in place.

3) The additional fee of $4800.00 to get the patent processed in one year may be more affordable to large companies. This may cause the 34 month backlog to extend beyond the 34 months. A small company could go bankrupt waiting for their patent to be granted. The end result is that all small companies will have to pay the $4800.00 as well. It did not say if the patent office would refund the $4800.00 fee if they failed to process the patent in one year. As I understand it, the patent office typically finds problems and then kicks it back to you for further clarification by a certain deadline. If the one year is then pushed out by how long it takes you to respond, it may not be much of an improvement.

4) I believe to invent something you must make a prototype which embodies the invention. Individuals and small companies often looked for partners to fund these prototypes during the one year grace period. I believe he said it is unclear whether this would invalidate the patent due to public disclosure. I believe it is necessary to have the interested parties sign non-disclosure agreements to prevent disclosure to the public under the current system, and I don't see how this changes anything.