Op-Eds in The Scientist Debate Impact of the AIA

By Donald Zuhn --

Two Op-Eds appearing in The Scientist over the summer present competing views on the impact of the Leahy-Smith America Invents Act.  In an article published in July, Dr. George Lewis, the Chief Scientific Officer and co-founder of ZetrOz, a biotech company based in Connecticut, argued that "[t]he controversial law . . . reflects our nation's bias toward corporations over smaller businesses and independent or university-affiliated scientists" (George Lewis, "Opinion: Racing Toward Invention," The Scientist, July 23, 2013).  As a result of the move to a firs-to-file regime, Dr. Lewis contends that corporations can "submit[] a new application with an updated version of an idea anytime they deem appropriate, [and thereby] block less-endowed inventors who simply cannot afford to file an application due to the costs involved."  He also asserts that the AIA will inhibit open communication among researchers due to the loss of the pre-AIA grace period, and therefore, that the AIA also constitutes a "setback" for academic institutions.

In an article published last month, G. Nagesh Rao, the co-founder of the public-private partnership, Made in America, and a former patent examiner and senior policy advisor for the U.S. Patent & Trademark Office, countered that while "there has been much criticism of the changes imposed by the Leahy-Smith America Invents Act (AIA)," such criticism has been "either incorrect or missing key pieces of information to explain why the law operates in a particular fashion" (G. Nagesh Rao, "Opinion: AIA Does Not Discriminate," The Scientist, August 21, 2013).  Mr. Rao argues that "the passing of AIA did not result in a 'first to file' system, as Lewis and others argue," but rather "adopt[ed] a modified 'first inventor to file' system, which preserves some of the protocol matters of the former 'first to invent' system, including the 1-year filing grace period."  He also asserts that the AIA provides "other added benefits for biotech, such as the implementation of three levels of examination procedures: accelerated, regular, or decelerated."  Mr. Rao concludes that "no legislation emanating from a democracy is going to be perfect given the various stakeholders in play, but the passing of AIA was a step in the right direction for keeping the United States’ competitive edge in a globalized economy."

Comments

[Igor]

I read that article by George Lewis at the time it was written about a month ago, and it seemed alarmist to me then.

No piece of legislation will ever fully satisfy all parties, but when the law is misrepresented by some, it looks even worse.

[Skeptical]

Igor states in part: "it looks even worse."

I would hope to quibble in a meaningful way by adding: "...or better" and explain that politics is driven more by perception than by reality, and that the worse/better dynamic is often one of perspective.

As Igor also mentions, no piece of legislation will ever fully satisfy all parties. Perhaps then, legislators should carefully take a step back and realize that their responsibility is not to any party, but to the entire community.

ANY legislation that fails to recognize, that fails to acknowledge where a piece of legislation falls short in serving the entire community, and that fails to admit of any particular part of the community that is especially advantaged, is open to criticism of undue favoritism.

Is such recognition even enough? Can writing legislation FOR ANY party be simply a mistake? Whenever ANY party succeeds in gaining the ear (and pen) of a legislator, can the outcome be anything but 'worse' because the legislation is better for one particular party?

Is legislation a zero-sum game?

And perhaps drawing back to a pragmatic and real-world view, is there a ready alternative?

Of that, I am somewhat...

[Truth Seeker]

What about the time it might take an independent inventor to reduce an "idea" to practice, compared to a large corporation that "acquires" the idea( or even all the work done after "conception")? The AIA was lobbied for by large corporations - that is clear! Why did they lobby for all these changes?

What about the problems of industrial espionage and cyber-theft? Can't corporations afford more protections against this, than can independent inventors? As for the opinions of Mr. Rao, how many "great" inventions came out of India over the last 200 years? Why are so many patent examiners not U.S. born (or even able to speak fluent English, in some cases)? Further, I'd like to know why "Pro se" applicants are treated with contempt by many PTO examiners and why some are quickly "forced" into abandonment of applications by insulting them rather than offering clear explanations as of what they have done wrong and better guidance as how to correct these?

I believe the AIA is entirely unconstitutional (for many, many reasons) and I hope the U.S. Supreme Court takes a close look at it. It is NOT what was intended in Article 1, Section 8 of the Constitution!

[Truth Seeker]

YUP - Mr. Roa sure knows a lot about what motivates invention in America. He thinks adopting the systems of Europe, Japan and India, will make it much better!!!

http://www.indiaeducationreview.com/news/india-counts-only-030-research-patents-world-pranab-mukherjee

[Nagesh Rao]

Just as a fyi...figured to offer the following clarifications...

1) I was born and raised in NY-USA. Trained at RPI, Albany Law, and UMD-College Park for degrees in Matls Engineering, Patent Law, and and MBA.

2) Prior career endeavors have included uni-startup incubator, building hardware and software startups in LA and SF, working for the USPTO and Dept of Commerce, and oh...practicing patent law as a lauded and respected expert in and outside government.

3) I am well aware of the pros/cons around AIA as well the subtle nuances that can and will play out short and long term. From a domestic and global perspective...

4) Finally it's fine to have a disagreement of opinion on policy issues but don't get the facts wrong and don't "assume" it makes an "ass out of u and me". Just because I have a different sounding name...I am not going to understand American Law or Startup innovation? I know it better than half of you posting here...