Not Necessarily Patent "Reform"

By Kevin E. Noonan --

The seeming legislative juggernaut that is the America Invents Act (S. 23 and H.R. 1249) is reportedly going to come to a floor vote in the House of Representatives this month.  If it passes, there is a real chance that the bill will be passed "as is" by the Senate, despite any differences between S. 23 and H.R. 1249 and be on the President's desk for signature before fall.  Since the administration's position is known (see "Commerce Secretary Provides Administration's Views on America Invents Act"), the time is for applying political pressure on Congress to address those portions of the bill that may hinder, not help, innovation.

One example of an attempt to encourage the "grass roots" effort that will be necessary to defeat (or amend, however unlikely that option may be) the bill is a letter from Carl Gulbrandsen (at right), the Managing Director of the Wisconsin Alumni Research Foundation (WARF).  WARF has long been a leader in technology transfer, beginning almost a generation before passage of the Bayh-Dole Act due to Vitamin D technology developed at the University of Wisconsin.  Dr. Gulbrandsen himself is a veteran advocate for increased intellectual property protection for university inventors; for example, he was one of the creators and leading proponents of the CREATE Act, which was intended to facilitate university-industry joint research.  Under his stewardship, WARF received the National Medal of Technology in 2003.

In short, Dr. Gulbrandsen has a lifetime of experience with technology transfer, innovation, and the patent system.  Thus, when he airs his views on issues like patent reform, it seems only prudent that Congress (and the rest of us) pay attention to what he has to say.  What follows is a letter from Dr. Gulbrandsen to his colleagues and the members of the Association of University Technology Managers (AUTM), regarding that group's support for the latest "patent reform" bill:

Dear fellow AUTM members and colleagues:

I am writing in response to the letter sent out by the AUTM board on May 17, 2011 (the "AUTM Letter") encouraging the membership to support H.R. 1249, the House of Representatives patent reform bill.  As director of an office that has been extensively involved in working with Congress and a number of stakeholders in the patent reform effort, I was very disappointed to read the AUTM Letter.  The letter does not fairly represent the impact the proposed legislation will have on universities, start-up companies, small businesses and independent inventors (hereafter, collectively, "innovators") if it becomes law.  The bill does represent a compromise as indicated by the AUTM Letter, as do all bills; and compared to the legislation as originally proposed, it is an improvement.  But compared to the present patent law, it is anything but an improvement.  Rather than benefit universities and strengthen patents as claimed in the AUTM Letter, H.R. 1249 promises to increase the cost of obtaining, maintaining and enforcing patents.  Directly and indirectly this proposed legislation would weaken patents and greatly reduce the incentive for licensing, changes that will frustrate innovation by favoring big business over innovators.  It conflicts with the statutory objectives and spirit of the Bayh-Dole Act and is of dubious constitutionality.

The reform proposed in this legislation includes the most significant changes to the U.S. patent law in over a century -- and they are not good changes.  There are five major changes proposed which individually and in concert weaken patents and make it more difficult and expensive for universities to obtain, maintain, license and enforce patents.

First, the proposed legislation moves the U.S. patent system from a first to invent system to a first inventor to file system.  The AUTM Letter states that this enables "U.S. inventors to compete more effectively and efficiently in the global marketplace."  How does moving from a first to invent, which has been part of the U.S. patent system from its beginning, to a race to the patent office make U.S. inventors more competitive?  It doesn't; moving to a first to file system favors large businesses and in particular, well-financed, large foreign businesses over innovators.  Operating effectively in a first to file system requires financial and staffing resources that are generally not available to universities or other small entities.  Most universities today need a licensee willing and able to pay the patent cost before an application is filed.  Under a first to file system, that will often mean the university loses the race.

Second, the proposed legislation weakens the grace period that has been such an important and valuable right for U.S. inventors.  For universities the grace period has been particularly important. Under present law, the inventor need not do anything affirmative other than having made the invention to be entitled to the grace period.  The inventor is entitled to swear behind any prior art created during the grace period and still be entitled to obtain a patent.  Under the proposed law, the inventor must affirmatively disclose the invention to be entitled to a grace period.  Thus under the proposed law, a disclosure of the invention not made by the inventor or another acting on information from the inventor will act as a bar even if within a year of filing the application.  Moreover, if the purpose of the proposed legislation is harmonization with the rest of the world, then the disclosure grace period is effectively non-existent.  A disclosure before filing acts as an absolute bar in most jurisdictions outside the United States so the grace period only becomes useful if one does not intend to file globally.

Third, the proposed legislation effectively shifts the constitutional balance between trade secrets and patents to favor trade secrets.  Under present law, a person needs to choose between protecting an invention through trade secret and filing a patent application.  If the inventor chooses trade secret, the law today holds that the inventor abandons his right to obtain a patent.  Under section 35 U.S.C. section 102(c), a person is barred from receiving a patent if that person has abandoned the invention.  The proposed legislation does away with section 102(c), so if this proposed legislation becomes law, a person can keep the invention a trade secret until it becomes clear that it would be better to have a patent and then file a patent application effectively extending that person's competitive advantage 20 years.

Fourth, the proposed legislation further shifts the constitutional balance in favor of trade secrets by expanding prior user rights.  Under present law, a patent owner holding a patent covering a trade secret that is not a business method can sue the trade secret user, and if successful, receive just compensation including in some circumstances an injunction.  Under the proposed legislation, the trade secret owner could assert the prior user defense and if successful receive a free, paid-up license under the patent for the patented invention and any products made using the patented invention.  In essence, the trade secret holder receives a free ride on the rights of the patent owner and what was thought by the patent owner to be exclusive rights as required by the Constitution becomes non-exclusive.  Of course, if the trade secret owner is a large company able to control the market, the patent rights may become commercially worthless to the patent owner.  As open environments, universities ordinarily do not deal in trade secrets, which is one of the reasons why WARF has consistently opposed expansion of prior user rights.  AUTM, until the letter of May 17, was a partner in opposing expansion of prior user rights, but now has shifted sides for reasons stated in the AUTM letter -- reasons we believe are largely political and not in the best interests of universities.

Fifth, the proposed legislation adds more opportunities to challenge the validity of patents.  Today, patent validity can be challenged through reexamination (ex parte and inter partes) and through infringement litigation.  Currently, it is more difficult to challenge a U.S. patent than a foreign patent, which we believe is good for U.S. universities and for U.S. innovation because it means that U.S. patents are considerably stronger than foreign patents.  Strong patents are critical to start-up companies trying to raise venture dollars.  Strong patents are also good for licensing.  The proposed legislation, however, adds both a post grant review procedure where patents during the 12 months following issuance can be challenged on any grounds and an enhanced inter partes reexamination procedure.  The net result is valuable patents will be more subject to challenge which increases costs for the patent owner, weakens the value of the patent, and makes it more difficult to license or raise capital funds necessary to starting a company and creating jobs.

As stated above, each of these changes acts to weaken our patent system to the disadvantage of innovators and especially university innovators.  Taken together, these changes strike a terrible blow to innovation in the United States.  Times are hard enough as is to start a company.  The last thing investors want is uncertainty, which is exactly what will happen if this proposed legislation becomes law.

This uncertainty is enhanced by legitimate questions of the constitutionality of this law.  In shifting the constitutional balance, the expansion of prior user rights runs counter to the constitutional purpose of our patent law which is to promote the progress of the useful arts by securing for a limited time exclusive rights to the inventor in return for disclosure of the invention.  It also fails to respect the express limitations in Article 1, Section 8, clause 8 of the U.S. Constitution.  The movement to a first inventor to file from the present first to invent system may also be constitutionally prohibited (referencing an article by Jonathan Massey).  Any patent reform that runs counter to the constitutional text and underlying purpose will face legal challenges that will call into question the validity of any patents granted under that legislation.  These concerns decrease the value of patents, make it more difficult to license and increase the cost of enforcement, which impacts innovators disproportionately more than large companies.

We encourage you to take a hard look at the legislation in light of what you and your offices are trying to do to commercialize university inventions.  I believe this proposed legislation strikes at the heart of what we are all trying to do and I am convinced it will make our jobs significantly more difficult.  We have attached materials that add additional information to the comments made above.  If you share our concerns, now is the time to act.  The Chairman of the House Judiciary Committee has stated publicly that he expects H.R. 1249 will be scheduled for consideration by the full House of Representatives during the middle of June.  Please ask your congressional representatives to oppose the bill or if you cannot do that directly, ask your governmental affairs people to do so for you.  Feel free to provide a copy of this letter to anyone you believe will be interested and helpful.  For example, provide a copy of this letter to the start-up companies you are working with, other local entrepreneurs and venture capitalists and ask that they oppose this legislation for the reasons stated in this letter.  Any assistance at all that you can provide will be very much appreciated.   Thank you for taking the time to read and carefully consider this letter.

Sincerely,

Carl E. Gulbrandsen
Managing Director
Wisconsin Alumni Research Foundation
614 Walnut Street
Madison, Wisconsin 53726

The rush to enact patent reform in this Congress stems from a variety of factors -- the perception at the turn of the last century that the patent system was "broken"; the many attempts to enact patent reform over the past four Congresses; the differing economic incentives between technology sectors (with the computer/high tech sector being generally in favor of limited patent rights and the biotech/pharma sector being in favor of strong patent rights) are examples.  This time, however, patent reform has been packaged by its supporters as a way to stimulate the economy and provide jobs; the lure of improving the economy is a veritable siren song to politicians who need to appear to be doing "something" to improve the economy in view of the economic meltdown in 2008.  And patent reform is a good sound bite for that political pitch, since few understand the relationship between patents, innovation, and economic growth and fewer still are immediately harmed by reform (although the negative effects will eventually be felt, it will be hard for most to assess blame on the cause and effect or those responsible).

While the political impetus and motivations may be understandable, they are not enough to justify passage of a bill as flawed as S. 23/H.R. 1249 (for all the reasons mentioned in Dr. Gulbrandsen's letter and more).  There is some hint of the beginnings of a bipartisan effort to address some of these issues before the bill is brought to a vote in the House; unfortunately, it will take more than that to make this a true "reform" bill.  Politics being the art of the possible, it is only by ramping up their political efforts that opponents have a chance of preventing the bill as currently constituted from passing.  Time is growing short.

Comments

[Dan Feigelson]

This is the clearest exposition of the problems with the current bills that I've seen - without going into the detailed wording of the legislation that tries the patience of even patent attorneys, let alone others. Thanks for sharing it.

[EG]

Kevin,

What Carl says is right on point. H.R. 1249, as well as S. 23, is a complete sham and fraud. Calling this piece of legislative junk the "America Invents Act" is oxymoronic. I've already said as much to my local Congressman who happens to be the Speaker of the House.

[Patrick P. Zaretski]

I believe another push for the Democrat-controlled Senate to enact this woeful bill is the party's misguided goal to harmonize American law with foreign law -- as if that really is a desirable, laudable goal! I commend Dr. Gulbrandsen for his clearheaded, sensible statement and hope that enough legislators read it or are influenced by it to defeat Patrick Leahy's umpteenth attempt to fix that which is not at all broken in American patent law.

[staff]

He is right. All this bill will do is legalize theft of our inventions by China and large multinationals.

The bill is improperly named. It should be titled the “America Kills Inventors Act”.

Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs. Those wishing to help in the fight to defeat this bill should contact us as below.

Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Yet small entities create the lion's share of new jobs.

Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.
http://docs.piausa.org/

[Mike]

There are lots of things to complain about, but I'm not entirely sure these are them.

Among other things, the absolute novelty requirement should be a HUGE boon to the academics and research institutions. By invoking the one year grace period following disclosure, the publish-first-and-patent-second strategy is going to be hugely beneficial to academic institutions and researchers. It actually tips the non-publication advice on its head. By using this strategy, small time inventors/researchers/academics will effectively preclude a major patent-seeking entity from acquiring the patent whilst permitting the publisher to get US rights -- although losing most foreign rights. If anything, it better serves the academic mission anyway.

In addition, better post-grant procedures are a necessary evil. Until we require a patentee to conduct a full search and exposition on how their patent application is different than everything that's out there, the patent office will remain ill-equipped to deal with patent applications of dubious quality.

Of course, the alternative could be worse: removing the presumption of validity.

Finally, griping about prior user rights is like saying, I deserve this patent even though people have been doing it for a long time. Complaining that you can't enforce a patent issued against someone who has been doing the "invention" since before you filed your application is nothing but sour grapes. It also undermines most people's complaints about who an "inventor" is.

Part of the problem with disliking "prior user rights" is the assumption the defense will only be used by those keeping the prior use a TS. It doesn't and it won't.

[MaxDrei]

I haven't seen the AUTM letter so I don't know why the AUTM now supports the Bill. I have seen Mike's comment above and welcome it because I too thought that a "First to Publish" system ought to be helpful for university researchers. I agree with Dr Gulbrandson, that:

"The last thing investors want is uncertainty"

but am puzzled by the next thing he writes, that confusion:

"is exactly what will happen if this proposed legislation becomes law."

Under First to Invent, when two parties invent overlapping subject matter and file for it independent of each other, it takes perhaps 20 years (Cooper/Goldfabb) of investor-confusing interference proceedings between those interfering parties to resolve which of them gets the patent. Everybody else has to wait till the interference is resolved. The Bill, however, like all the rest of the world, allows the entire general public, including those investors, to resolve interfering applications (and then make appropriate investment decisions) 18 months from the filing date of the last-filed interfering application.

And why say you have to choose betrween trade secret and filing? You can delay filing as long as you like, with no penalty for abandonment or lack of diligence. Your only risk is that somebody else files first. But AUTM members are so far ahead of anybody else, there should be no danger of that. So, plenty of time for an AUTM member to find investors and then, adequately funded, write a first class, US patent application still filed before any other party gets to the Patent Office.

But tell me it ain't so, do.

[Kevin E. Noonan]

Mike and Max:

I think the problem with the prior user rights provisions are that they reduce or eliminate the traditional disincentive to non-disclosure: if a first inventor does not patent, she is at risk of the later inventor patenting and asserting the exclusivity against them. This is a public policy argument - the idea is disclosure, and if there is no risk there will be no incentive. This is particularly disadvantageous to universities, that don't have the option of non-disclosure (and we don't want to have universities reducing disclosure, since this would be contrary to the university's mission).

As for first to invent versus first to file, the Cooper/Goldfarb example is an anomaly within an anomaly, since even the supporters of first to file admit that interferences are (relatively) rare. While Max is correct that it can be disruptive, there are more than one way to resolve an interference - and a large percentage of these settle.

Interestingly, this factoid about interferences cuts both ways - if there are so few interferences, then first to invent is not a burden on innovation. But if there are so few interferences, then first to invent must usually be the first to file.

Thanks for the comments.

[MaxDrei]

Thanks Kevin. Is the old rule for academics "Publish or Die" still in force? I was giving America credit for recognising this reality for its academic inventors, engineers and scientists. "First Inventor to Publish" struck me as an elegant and innovative way for the USA to give its own academic inventors breathing space, and thus an edge over their rivals in the rest of the world.

As to interferences, we should distinguish between potential and actual interferences. Both cause confusion and uncertainty, do they not (and mainly for all those third parties in the industry, monitoring the progress to issue of the rival threatening applications). I assert, based on observation in Europe, how often it is that rival filers pursue much the same subject matter at much the same time. In an ever more keenly competitive world of technology, which we patent attorneys welcome, that is indeed as it should be, no? The number of putative interfering situations is set to rise, from its already enormous level.

I compare it to patent litigation in England. Again, in very few cases are proceedings actually issued. In all the rest, the aggrieved party shrugs and makes do, for the same reason, because the consequences of provoking a dispute, in time and money, are simply too awful to contemplate. There have been cries to reform the English patent litigation process, for as long as I have been in this business.

As you say though, when all is said and done,the winner is usually the one who was first to file. Do you know by the way, was it Cooper or was it Goldfarb who filed first, and did the first filer win?

[Anonymous]

"If the inventor chooses trade secret, the law today holds that the inventor abandons his right to obtain a patent."

Cite please. Because I have a whole boatload of cites that contradict the above statement: http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2134.htm

[6]

"This is a public policy argument - the idea is disclosure, and if there is no risk there will be no incentive. "

Mmmm, idk about that. There will still be incentive, just not the same level of incentive. Surely you can recognize this. Merely not being locked out use of your own invention does not directly affect the incentive of being able to lock other people out of using your invention.

"This is particularly disadvantageous to universities, that don't have the option of non-disclosure (and we don't want to have universities reducing disclosure, since this would be contrary to the university's mission)."

We wouldn't want to reduce the patent tolls we dictate that companies are charged so as not to offend a university's "mission"? Interesting Kev. Probably [Redacted], but at the same time interesting.

"Thanks Kevin. Is the old rule for academics "Publish or Die" still in force? I was giving America credit for recognising this reality for its academic inventors, engineers and scientists. "First Inventor to Publish" struck me as an elegant and innovative way for the USA to give its own academic inventors breathing space, and thus an edge over their rivals in the rest of the world."

Indeed max, it seems to me like we could even make the patent bargain even better to induce people to publish early, like, for instance, creating a super enablement and super best mode requirement for the publication and a req that the publication be made somewhere very likely to be consumed by their industry and then simply giving them patent rights going back to the date of publication upon issue of a patent. Perhaps even in addition to the 20 years or perhaps as an alternative way for them to choose to start their 20 years.

The real question is whether or not you're concerned with disclosure or if you're concerned with a corporation's ability to make $$$. In other words, is promotion of the useful arts the reason for the patent statutes, or is the promotion of profits the reason for the patent statutes? And also to some extent whether or not you're afraid that big corps will keep lots of inventions which we'd like to know about under wraps because they don't care to tell us about it and don't care about preventing other people from using that invention.

[MaxDrei]

False dichotomy 6. The goal of a patent system is disclosure to promote the progress. The price is that patent owners make enough money, so they find it worthwhile to research, develop and bring to market an ongoing stream of further useful new products, life-saving ones included.

Of course, in some non-lifesaving fields, as demonstrated by the software field before it became patent territory, we get an excellent flow of new products even without the inducement of monopoly profits.

[Skeptical]

"as demonstrated by the software field before it became patent territory"

I am skeptical of this claim - as the advances (due to patenting or not) since patents on software became available far, far outdistance the advances prior to patents became available on software.

[6]

"as the advances (due to patenting or not) since patents on software became available far, far outdistance the advances prior to patents became available on software."

Lulz, maybe you and Moore's law should have a convo sometime. Software does nothing that the hardware will not allow and does everything that the hardware will allow. The hardware is where the revolution occured, the software just followed.

What is more, the market for programs determines how many people are working in that field. More people got PC's and thus more people are making and consuming programs.

[MaxDrei]

Skeptical reports that he is skeptical. I think that is fair enough. We should all be skeptical. We should look for evidence. But, as the UK Government found out recently, when it undertook a massive study to see whether or not patents on software are a "good thing", the evidence is not available. So, we are each free to continue for the time being with our prejudiced positions and our wishful thinking, eh Skeptical?

[Skeptical]

MaxDrei,

It appears that you are asking for permission to continue entertaining dubious positions because of some foreign study concerning a purported "good thing."

As professional counsel we are trained to apply critical thinking and that critical thinking far far outweighs any notion to be "free to continue for the time being with our prejudiced positions and our wishful thinking." So, my reply to you would be in the negative, and further, I would emphasize that there was no such freedom to begin with, at least not to the professionals in this field.

[MaxDrei]

Good for you Skep. Hope you feel better, now you have got those deep deep thoughts off your chest and up into the ether.

And there was me, thinking all along that we base decisions on evidence. I have the impression that what I call "prejudice" you call "critical thinking". Strip it of +ve or -ve gloss though, and it's the same thing, isn't it?

[Skeptical]

Pardon me for pointing out that your latest statement of "thinking all along that we base decisions on evidence" simply does not match your earlier position of "prejudiced positions and our wishful thinking."

It surely is NOT the same thing in the context with which you presented it (for example, wishful thinking has a decidedly non-critical thinking aspect). As for your unsubstantiated condescension of "feel better," let me remind you that this is not Patently-O - please save your snark for that blog.