The United States has always been at the forefront of innovation. Perhaps born of necessity given our “wild frontier” history or perhaps just dumb luck, for better or worse, the United States has more often than not been the spearhead of change. From the industrial revolution, to the more recent technological revolution, to the information age, the United States has been the “tip of the spear.”
How did a new country, born of immigrants, become the world’s innovator? Thomas Jefferson, an inventor himself, supported the introduction of a Patent Act, not because he believed inventors should have rights in their inventions, but because he believed it was a necessary evil to promote the exchange of knowledge. In fact, he believed awarding patents to inventors was an embarrassment that was to be endured in exchange for the progress he believed it would promote – a quid pro quo if you will – he has been proven correct. He believed that if we provided incentives for the development of new and useful things and for those things to be available to public, more new and useful things would be developed and developed more quickly. His ideology meshed perfectly with our “first to invent” system, which was substance over form; i.e. it was not a race to the patent office, it was a race to perfection. In fact, our “first to invent” system has been the backbone of the U.S. Patent System since its inception. Now the incentive has been changed to give the patent monopoly to the first to file. While true inventors are busy inventing, mere businessmen and slower inventors will be busy racing to the patent office with “half baked” disclosures. In other words, we, the citizens are again getting the short end of the stick as the “full disclosure” part of the quid pro quo, can only be damaged by the race to the patent office. While true inventors are busy perfecting their inventions, the hustling inventors will be busy writing patents, thus thwarting the societal benefit that Mr. Jefferson argued would result from the necessary evil that is the patent monopoly.
The America Invents Act ignores all that, and, effective March 16, 2013, the United States will follow the rest of the world and convert to a first to file system – notwithstanding the fact that for two hundred plus years our system has been the engine of great innovation. This means that the first to file for a patent, even though they may not have been the first to actually invent or perfect the invention, will be granted the monopoly. There will be no more swearing behind a “first filer’s” filing date and being allowed to prove that you were actually the first to invent and were merely perfecting it.
Moreover, The America Invents Act brings significant changes to prior art and the implications of prior art. There will actually be an incentive to disclose early and often because only the first to disclose (typically an inventor who has the good sense to keep his invention secret until ready to be disclosed) will have a grace period of one year from such first disclosure to file an application. Thus, if you disclose an invention, no one else, whether they invented it earlier or not, will be eligible for a patent on that invention – only the one who discloses and only for one year from the date of that disclosure. (Perhaps it should be renamed the first to disclose system?)
While all that is arguably radical enough, perhaps the most glaring enactment of the America Invents Act is not what it changes, but what it doesn’t change. Many of the recent decisions coming from the Supreme Court and the Court of Appeals for the Federal Circuit regarding patent issues are in connection with patentable subject matter, specifically, whether business methods and computer software are patentable. The Supreme Court’s recent Bilski decision and the CAFC decisions thereafter, Cybersource and Ultramercial, and the lower federal district Courts, as well, Accenture, Bancorp, and CLS Bank International, all relate to whether business methods and computer software were patentable subject matter pursuant to 35 U.S.C. §101. How alive is the machine or transformation test? Should there be any bright line rules? What does it take to make software, or any method for that matter, patentable? The Courts merely interpret the law and the Courts have professed a need for guidance. As we know, the legislature writes the laws, and whenever the legislature believes the Courts are misinterpreting the law, they are free to clarify or re-write the law to guide the Courts regarding what they meant when the law was enacted.
What better time to provide guidance to the Courts on an unclear area than during a radical revision of the Patent Act? Given the recent spate of argument over what 35 U.S.C. §101 means when it says “any process” is patentable subject matter, and the Supreme Court having already carved out three exceptions to “any” as belonging to all men (laws of nature, physical phenomena, and abstract ideas), the passing of such a sweeping reform of U.S. patent law was the perfect opportunity for the legislature to weigh in and explain what it means by the term “process.” Incredibly, though, not only does the America Invents Act not provide any explanation of the hottest topic in patent law, it specifically and affirmatively abstains. The America Invents Act provides: “RULE OF CONSTRUCTION.—Nothing in this section shall be construed as amending or interpreting categories of patent-eligible subject matter set forth under section 101 of title 35, United States Code.” Thus, not only did they not say anything on the subject, they emphatically said that even if they did, they didn’t mean to and no one should construe anything in the entire Act as saying they did.
For an inventive country and an Act with an inventive name, we leave the inventors to race to the patent office and judges to invent what “process” means.
Do you have a question about what about how the America Invents Act will effect your rights in your invention or about patent law in general? Contact The McHattie Law Firm for help.
(Jack Baldini)