The legislation also contains a prior-user rights provision that will allow companies to address infringement claims by demonstrating that they have commercially used an invention prior to the grant of its patent. This provision is troubling to many universities and innovators while it, is particularly attractive to U.S. manufacturers who may not patent every new device or manufacturing process, preferring to consider these trade secrets. This provision – combined with the fact there is no legislative guarantee to prevent future fee diversion – may prove to be the gravest features of the AIA. Sen. Leahy has made clear his intention move legislation to revisit prior user rights. So critics of the AIA –assuming the new law proves problematic to their interests– should plan to be positioned to engage and work to defeat Leahy’s bill and/or scale back the AIA’s measure.
Finally, a serious practical challenge going forward will be implementation of the AIA. It will be up to all of the bill’s stakeholders to remain engaged to insure that the bill’s:new PGR process is implemented as envisioned; the studies are fair and balanced; that the patent field offices are established are implemented, and most importantly, that the agency is able to spend the fees it collects. The law of patentability will be more complicated and unstable for the next decade as we go through the AIA’s implementation and transition.
Troubling Provisions That Were Removed/Defeated
It is fair to say that enactment of the AIA is not what most stakeholders championed early on. Many small inventors and innovation companies feel that some of the provisions are not in their best interest. IT would have preferred a bill that did more to change how patents are valued and enforced. Nevertheless, to most stakeholder, the final version of the bill is an improvement over previous versions of patent legislation. When patent reform legislation was first introduced in 2005, its primary objective was to reduce the infringement liability of large technology aggregators by significantly limiting equitable and monetary remedies, restrict venue, and make issued patents far easier to invalidate through post-grant review. In addition, earlier versions of the bill would have given the USPTO unprecedented substantive rulemaking authority and increased the cost and burden of filing a patent application. In combination, these measures would have significantly undermined the enforceability and value of patent rights, while increasing the cost, complexity, and uncertainty of obtaining patents. All of these reforms were advanced by a IT interests set on weakening the ability of small innovators to obtain and enforce patents.
Stakeholders ranging from the IA, 21C, IPO and others worked together to substantially improve other aspects of the legislation and achieved the following improvements to the AIA:
- Eliminated provisions that would have mandated “apportionment” of reasonable royalty damages in all or most cases.
- Eliminated a provision that would have required courts to stay infringement actions against non-manufacturing entities pending litigation against manufacturers.
- Eliminated a provision that would have given the USPTO expansive and unprecedented substantive rulemaking authority.
- Eliminated a provision that would have restricted injunctive relief in patent infringement cases.
- Eliminated a provision that would have significantly heightened the standard for proving willful infringement.
- Eliminated a provision that would have significantly restricted venue in patent infringement cases.
- Eliminated a provision that would have required patent applicants to submit to the USPTO a prior art search report and patentability analysis.
- Eliminated a provision that would have compelled the Federal Circuit to accept interlocutory appeals of claim construction rulings.
So Who “Won”?
Politically, few would dispute that both Senator Leahy and Rep. Smith and their staffs demonstrated great leadership in the long-drawn-out campaign to pass the AIA. PTO Director David Kappos has shown himself to be a superb advocate for his agency and its mission. The AIA probably would not have passed were it not for his evenhanded approach to the stakeholders with diverse opinions on the legislation.
For the various groups, it is difficult to measure the relative impact each stakeholder had on the debate over patent reform, but it is clear that a few groups had a significant impact. Many of the final bill’s provisions have been cornerstones of IPO and AIPLA patent agenda for years. Cleary 21C and its member companies, which started out years ago championing the FTC and NAS Reports, wound up with a bill they could only have dreamed about at the height of IT’s drive for a tech-friendly product. The banking industry and its trade association, the ABA, was able to deliver industry-specific relief. MedCo certainly overcame significant odds to deliver a provision few would have thought could remain in the bill.
The Innovation Alliance – in coordination with a cross-coalition of companies, despite long political odds, and much better-funded opponents – was able to eliminate anti-licensing and open-ended IPR elements in the AIA and brought significant attention and commitment to the important issues associated with PTO funding. Persistence, talented members and advocates, and a willingness to work collectively helped all of these organizations achieve a measure of success.
Some of the IT industry’s advocates voiced criticism of the AIA for not going far enough, saying the bill is “not a game changer.” Perhaps a reform bill that does not contain venue reform, mandatory stays, apportionment of damages, or an open-ended post grant review system is not the bill IT initially sought to achieve. But the AIA contains important, significant reforms that will benefit IT including IPR, prior user rights, and first-inventor-to-file.
In the end, it was the absolutists who may feel they have come out on the losing end of this legislative process. Of course, if Congress retreats on the pledge to fully fund the USPTO the big loser would be not only the agency but all stakeholders. A continuing resolution to fund the government past September 30, 2011 was defeated in the House of Representatives yesterday by a vote of 195-230, but the AIA isn’t even a week old and Congress is already contemplating diverting funding in a CR, which isn’t exactly inspiring.