How patent laws are harming children and America’s innovative future

By Paul Morinville
March 26, 2016

child-lightbulbI’ve been traveling the country this year meeting with inventor clubs. Even with the significant damage the courts and congress has brought to the patented property of inventors, inventors still believe they can invent something, own the exclusive right to their invention, and profit from it. After all, this fundamental right of the American story, which was taught to us in grade school and lingers in our minds, is the American Dream.

So far, I’ve spoken to more than a dozen inventor clubs across the southeast and in Texas. For the next few months, I’ll be visiting many more inventor clubs and other innovation organizations like makers groups, angel investor groups, chambers of commerce, entrepreneurial groups and small business groups. I can tell you this much… when these folks learn about how much damage has been brought on their own personal version of the American Dream, they understandably get upset and take action. Of course, they call their representatives, but, most of these clubs are also participating with US Inventor and the United Inventors Association in Amicus briefs to the Supreme Court on patent issues that affect inventors. Many have committed to tell ten friends, write op-eds and letters to local papers and to come to Washington. You will hear much more from inventors in the coming months about their opinion on the multinational takeover of the patent system.

Most members of inventor clubs are inventing new consumer goods, the things you see at big box stores and online, but there is a substantial percentage inventing new software and hardware technologies for various industries. Inventor clubs are often founded by successful inventors trying to give back to their community by sharing their experience and contacts to help others succeed. Clubs invite subject matter experts to teach members various innovation subjects ranging from ideation, prototyping, manufacturing, marketing, pitching, patent protection, licensing and more. Clubs are a place for inventors to pitch their ideas to other inventors and to meet the people who can help them succeed.

While all of the clubs are great resources for inventors, there are a few that stand out for community involvement. One example is the Houston Inventors Association. This club is a top-notch club, but it also promotes and manages the Young Inventor’s Showcase. The Young Inventor’s Showcase is nothing short of an amazing academic program in 56 Houston area grade schools. It is well run and supported by the complete ecosystem of education – schools, parents and the Houston Inventors Association. The program teaches grade school kids the entire innovation system from problem identification to the store shelves. The class wraps up with an inventor competition judged by members of the Houston Inventors Association.

I was very fortunate to be invited by the Houston Inventors Association to help judge one such competition in a local grade school. My first student inventor was a third grader just slightly over three feet tall with a world-class smile and a strong handshake. His invention was as complex as it was pragmatic and he pitched it with the professionalism and flair of the late television pitchman, Billy Mays. This eight year old not only developed a product that may be patentable, but he understood the problem, the market gap, how his invention filled the gap, who would buy it, the competition and what differentiated his invention in the market. He had even performed a prior art search at the USPTO and could describe what differentiated his product from the patents he had found. After he concluded his incredible pitch, he pulled out his invention logbook where he had logged his entire process of invention. I could not believe what I had just witnessed from this professional and confident (I have to say it again) eight-year-old kid.

After I graded him in the categories the Houston Inventors Organization had laid out in an evaluation form, I turned to the next inventor. I assumed the three foot tall Billy Mays was an anomaly. Certainly, others would not be nearly as well prepared. However, he was just the first of dozens of inventors that day, all of which were fully prepared. In fact, this program prepares the kids so well that some of the kids in past programs have brought their products to market and a couple are still receiving licensing revenue.

As I drove away headed to South by Southwest in Austin, I thought those kids who had licensed their inventions and how that must make them feel to be an actual inventor. Perhaps this would spur a career as an inventor and bring all of us many wonderful things and jobs. But how many of the inventions I saw in that competition could also be patentable? Billy Mays’ invention for sure, but there were at least a dozen others.

The America Invents Act created a first to file system, which means you really need to file a patent application prior to any disclosure. All of these inventions were disclosed without even a provisional patent application being filed. This omission could cause serious, even irreparable problems. This isn’t just a concern for the Houston Young Inventors Showcase, but is a problem for all science fairs and similar events. It has always been a bit of a concern because once you disclose an invention it is no longer patentable in many countries, but up until March of 2013 disclosure in the U.S. prior to filing a patent application did not create a patent problem here. But today an invention disclosed prior to the filing of a patent application may no longer be patentable in the U.S.

Of course, there is also the problem of human nature — any of these inventions could be patented by someone else. That would be like stealing candy from a baby, but there are many unscrupulous people in this world. Some reading this will no doubt think that an invention made by one person couldn’t possibly be seen by another and then patented right out from under the original inventor. Unfortunately, thanks to changes in U.S. patent law brought into being by the America Invents Act (AIA) that very well could happen. There used to be a grace period for inventors; 12 months from the time of any disclosure to file an application. If you filed an application within that grace period you would be fine and if someone tried to steal your invention it was generally quite easy to prevail by filing a simple affidavit with the Patent Office.

Today, if someone files a patent application on your invention before you the likelihood is you will need to file what is known as a derivation proceeding, which will likely cost you many hundreds of thousands of dollars, and that is even if you are allowed to challenge the stealing party. The AIA created a race to the patent office, so you must file first. If you don’t file first in order to even be allowed the privilege of spending hundreds of thousands of dollars during a derivation proceeding you have to have substantial evidence in your petition that proves your invention was stolen. Legally speaking, that is a very high threshold. This and many other derivation rules are simply stacked against the inventor who had his or her invention stolen. Welcome to America’s new first to file system.

This is another unfortunate circumstance of miserably bad patent reform legislation that really doesn’t reform anything, but instead only makes it worse for inventors. The American Invents Act really needs to be repealed in its entirety and replaced with legislation that strengthens patent rights. But at the very least, there is no reason why the United States cannot and should not have a grace period. This could be fixed immediately, bills have been proposed to remedy the tragic demise of the grace period, but action sadly seems unlikely in this Congress.

The kids of Houston’s Young Inventor’s Showcase would be well served by smarter patent policy. To say America’s innovative future depends on it is an understatement.

 

Editorial Note: The video below is from the 2009 Showcase. What a program! How is this program not everywhere? 

The Author

Paul Morinville

Paul Morinville is Managing Director of US Inventor, Inc., which is an inventor organization working in Washington DC and around the US to advocate for strong patent protection for inventors and startups. Paul has been walking the halls of Congress knocking on doors and sitting down with hundreds of offices to explain the damage suffered by inventors due to patent reforms. Paul is an independent inventor with dozens of patents and pending patent applications in enterprise software. He is also CEO of OrgStructure, LLC, an early stage enterprise middleware provider in Northwest Indiana.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments.

  1. angry dude March 26, 2016 10:37 am

    Paul,

    First to file is actually ok, it’s not the root of all evil

    We can live with first to file just fine – it reduces confusion and eliminates the possibility of interferences in PTO, and provisional patent applications are cheap

    Of course, if a person can’t clearly describe his own invention and can’t assess its full potential then he needs to seek legal and other advice

    But most of independent inventors are just fine with first to file provided they can file cheap provisional applications before shelling out money to lawyers

    Maybe some people disagree, but it’s a lot easier to rely on provisional with PTO stamped date and time than on inventors notebook (who actually keeps those ?) or a public demo in some inventors club or trade show.

  2. Anon March 26, 2016 10:46 am

    angry dude,

    Careful there with the “provisionals are cheap” line of thinking. As the recent threads by Gene on the subject point out, you very much “get what you pay for,” and focusing on “cheap” is simply no substitute for content.

    If you are not thinking of enforceability – even at the provisional stage – your “but its cheap” can easily become a trap, throwing (even cheap) money away because it lacks the substantive quality (and please do read that as $ spent in the effort to capture in a legal document what needs to be captured anyway.

    I cannot tell you how much “re-education” I have to engage in because people take away the wrong message from “provisionals are cheap and easy.”

  3. angry dude March 26, 2016 11:47 am

    Anon,

    I don’t get anything at all, at this time, whether I file provisional myself or my patent attorney files a carefully prepared regular patent application with all claims
    ,t attorney (who had very solid track record in high tech, software, telecom etc) and guess what ? After recent SCOTUS decisions like Alice half of my claims trying to generalize the concept of invention will probably be found too abstract, indefinite and therefore invalid
    You get what you pay for ? Not at all
    How can you pay for a “legal document” if they can change patent laws 180 degrees in just a few years ?

    Insane

  4. Gene Quinn March 26, 2016 12:05 pm

    Angry dude-

    You say: “But most of independent inventors are just fine with first to file provided they can file cheap provisional applications before shelling out money to lawyers.”

    If you file a cheap provisional patent without the help of an attorney good luck to you. Is it impossible? No. But it is absolutely essential for inventors to realize that the overwhelming majority (like over 90%) of provisional patent applications filed are completely worthless. The disclosure of the invention needs to be complete. Inventors who file provisionals carelessly also risk the very real possibility that they will demonstratively prove that as of their filing date they had no invention at all.

    As for first to file being good, the point you also seem to miss is that first to file also comes with vast changes to what qualifies as prior art. It is harder to get a patent under an AIA examination than under a pre-AIA examination.

    -Gene

  5. Anon March 26, 2016 12:47 pm

    I concur Gene – the saddest thing of all that attaches to your statement of “ It is harder to get a patent under an AIA examination than under a pre-AIA examination.‘ was just how much the AIA was spun as being a “good thing” – the obligatory 1984 redefinition of meaning with the “America Invents Act” meaning “America No Longer Protects Its Inventions Act.”

    A bit of hyperbole, no doubt, but it is beyond obvious (to me) that “the fix” was in during the AIA bill-to-law cycle and anyone thinking that this new law was anything but a “gift” to the “Efficient Infringement” lobby needs to have a sizable amount of gloss removed from their vision.

  6. angry dude March 26, 2016 1:38 pm

    Gene,

    I said provisionals are fine for “most of independent inventors”, not for all of them

    “Inventor” is assumed to be an intelligent person who can clearly express his ideas in a written document
    Heck, I wrote provisional myself, and there was very little my patent attorney added to it other than claims. And, btw, English is my third language and it still sucks
    So to mention first to file and inadequate provisionals is just scratching the surface of the real issues facing the US Patent System at present

  7. Paul Morinville March 26, 2016 2:15 pm

    Angry Dude, most inventors are not capable of filing a provisional without an attorney. These kids certainly are not. Most inventors have no idea at all that they need to file one. They rely on Article I, Section 8 and the history they learned in grade school assuming our laws will protect them. They know nothing about law except you can’t drive 50 in a 30.

    Most could not explain it well enough verbally to capture it invention in words at the level required in a court.

  8. Stuart Fox March 26, 2016 6:14 pm

    No Grace Period ?

    From the USPTO Website today.

    2153.01 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor Or Inventor-Originated Disclosure Exception) [R-11.2013]

    [Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

    AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an inventor’s own work as prior art, when the inventor’s own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor not more than one year before the effective filing date of the claimed invention. AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. MPEP § 2153.01(a) discusses issues pertaining to disclosures within the grace period by the inventor or a joint inventor (“grace period inventor disclosures”) and MPEP § 2153.01(b) discusses issues pertaining to disclosures within the grace period by another who obtained the subject matter directly or indirectly from the inventor or joint inventor (“grace period inventor-originated disclosures”). MPEP § 2152.01 discusses the “effective filing date” of a claimed invention.

    Stuart Fox – Inventor

  9. Gene Quinn March 26, 2016 6:52 pm

    Stuart-

    The “grace period” that remains under the AIA is so infinitesimally that it is completely useless. I’ve written about this several times, most recently here:

    http://www.ipwatchdog.com/2016/01/09/first-to-file-means-file-first-filing-a-patent-application/id=64809/

    It will be virtually impossible for an inventor to take advantage of the extraordinarily limited grace period that remains. In fact, it is difficult to come up with a real-life fact pattern where an inventor could legitimately claim entitlement to the grace period. That is why first to file absolutely MUST be interpreted as FILE FIRST! If you disclose prior to filing you must then with all due speed rush to file a patent application. All may not be lost. Sadly, there is no way to know. So if you disclose without filing first the best you can do is file as soon as absolutely possible and pray for the best.

    -Gene

  10. PAUL MORGAN March 27, 2016 11:40 am

    Mr. Fox is right, and the article is wrong. [It’s nice to see a substantive comment.] There is still a one year grace period for public disclosures by the inventors themselves. Yes, it has dangers, especially if what is disclosed is not full 112 support for what is later claimed, and it does not preclude some intervening “improvement” patent applications of others. [Also, we have yet to see case law developed on the PTO’s handling of this issue.] But neither did the pre-AIA grace period. At least the AIA prevents others from alleging that THEY had invented it before that public disclosure date.
    Gene is also right that many, if not most, do-it-yourself provisional applications do not provide an effective filing date for what is ultimately claimed and attempted to be enforced in a patent.

  11. Gene Quinn March 27, 2016 5:29 pm

    Paul-

    First, the article is not wrong. There is no longer a useful grace period under the AIA, which is why there have been legislative attempts to restore the grace period ever since the AIA passed.

    Is there a grace period in name under the AIA? Yes, but it is so narrow that it is impossible to come up with a real life example of where it would appropriately be useful.

    First, under the AIA there is absolutely no grace period unless the inventor disclosed. No disclosure no grace period. On top of that, disclosure is not enough. The inventor claiming to be first will need to prove communication of the disclosure to the other party. No evidence of communication then no entitlement to the grace period. Supposition, belief or claims that “they had to have seen my invention” won’t suffice. Hard evidence is required. On this factor alone virtually everyone will fail.

    Second, in order for there to be a grace period the inventor must be either (1) attempting to remove his/her own invention as a reference; or (2) attempting to remove an identically described invention. The grace period does not save inventors from subsequent independent invention by another. The statute is clear, so is the USPTO interpretation on that point.

    Third, if there are any differences between what the inventor disclosed and the subsequent disclosure those differences, at a minimum, will be prior art to the alleged first inventor. That being true, those differences could well make it impossible to obtain a patent ever.

    I recommend you read: http://www.ipwatchdog.com/2016/01/09/first-to-file-means-file-first-filing-a-patent-application/id=64809/

    -Gene

    The AIA grace period is absolutely nothing like the pre-AIA grace period and anyone that refuses to accept that is in denial.

    -Gene

  12. PAUL MORGAN March 27, 2016 7:41 pm

    The subject here WAS about prior public disclosures by inventors, not about secret alleged prior inventions. If there was a public disclosure then saying “The grace period does not save inventors from subsequent independent invention by another” is not really true, because the contents of that earlier public disclosure is prior art to everyone else.
    Furthermore, although now nearly academic, nostalgia for what folks THOUGHT was pre-AIA “grace” is to a large extent based on a common lack of appreciation of just how rarely someone who was second-to-file succeeded taking any claims away from the first to file, and how even more rarely the typical ex parte uncontested Rule 131 declaration alleging prior invention ever survived in litigation when both are subjected to the full tests of 102(g) and its strict case law. Such Rule 131 declarations have even lead to inequitable conduct decisions.

  13. Gene Quinn March 28, 2016 11:45 am

    Paul-

    God help your clients if you really believe there is a useful grace period under the AIA. As I’ve explained here and elsewhere, there is no such useful grace period under the AIA.

    If an inventor publicly discloses an invention prior to filing a patent application they MUST file as soon as possible. At best the AIA grace period is an “opps, we screwed up, but maybe just maybe we might be OK.” Of course, there is no way to know whether you will be OK because there is no absolute entitlement to the grace period.

    As for you mentioning “taking any claims away from the first to file,” not sure why you are conflating interference practice with the grace period. Taking claims away from another comes up under 102(g) and the grace period comes up under 102(b). You do not need to swear behind anything in order to take advantage of a 102(b) grace period, so your mentioning of Rule 131 affidavits is flat wrong and can only be intended to mislead. In fact, I would have expected you to know that you can’t use a 131 affidavit to overcome a 102(b) rejection.

    Whether you want to believe it or not, this article is correct. Your analysis is questionable, and in your last comment what you said is clearly and provably wrong if anyone cares to take the time to verify what I’ve written against what you have said.

    -Gene

  14. staff March 28, 2016 1:00 pm

    ‘The American Invents Act really needs to be repealed in its entirety and replaced with legislation that strengthens patent rights.’

    We agree. All it does is make it easier for large multinationals to rob and crush their small American competitors who produce the lions share of new jobs here. Those are the same multinationals who when they cant export jobs, import workers from low wage countries while laying off their American workers and artificially inflate their employed Americans.

    For our position and the changes we advocate, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at tifj@mail.com

  15. Floyd E. Ivey March 28, 2016 6:39 pm

    The comment seems to suggest that if someone “sees” an invention that they can then be in the race to be the first to file a patent application. The “seeing” does not make the person looking an inventor. It is the First “Inventor” to File and not the First person to File under the AIA. The same requirement existed under the law prior to March 2013 – the person filing must be an inventor and not just the person who saw an invention and then filed an application. The non-inventor who steals the “invention” and files an application has misappropriated from the inventor and is the person who commits fraud on the Patent Office.

    The Inventor cannot do any of 5 actions before filing a patent application – 1. the inventor cannot publish enough detail of the “parts and pieces and how they go together” to have the invention do some act. If enough information is published then the inventor cannot file. 2. the inventor cannot use the invention for the inventor’s own business purposes – such use is “public use” and is prohibited prior to filing the application. 3. the inventor cannot display the invention, as at a trade show. 4. the inventor cannot offer to sell one of the invention items and 5. the inventor cannot sell one of the items prior to the filing of the patent application.

    But the earliest steps to take before commencing the patenting process include a step to be taken by the inventor and a step to be taken by the patent attorney – It is vital for the inventor to have a realistic understanding of the expense of the patent process and why the patent application must be prepared by a patent attorney. The reasons that the patent process is very expensive is that the Issued Patent describes a property which is new, hasn’t been surveyed before, and the describing of a “new property” is very complex legally. Patent attorneys are engineers or scientists, usually with college degrees and engineering experience, who have studied patent law, court and patent office decisions and have attended seminars where new patent cases are discussed and new practices within the Patent Office and by the Patent Examiners are discussed and explained.

    The Provisional Application is the most prominent way for an inventor to loose the ability to get a patent. Every word and every drawing of the elements of the invention must be in the provisional in order to provide the basis for patent claims. Hence, the attorney fee will be almost if not identical to the fee for preparing an utility patent application at the outset.

    I said “survey” a few sentences earlier. There is a relationship between deeds for real property and patents for inventions. In the 1920’s people were enticed to move to the west to get land under the homestead acts passed by congress. When people came out, cleared rocks and trees, plowed, planted and harvested and built and lived in a home, they got the land but did not get deeds. They got Patents from the United States Government. Thus the words “deed” and :”patent” both describe a legal instrument that describes a property – both give the boundary descriptions of the previously unsurveyed property. Land on the one hand and an invention on the other.

    Get an attorney to assist. Floyd E. Ivey, Washington State, feivey@3-cities.com.

  16. Floyd E. Ivey March 28, 2016 6:42 pm

    Attorney advice to inventors – first do a business valuation – will the invention make as much money as the inventor will pay to the attorney? Get the patent attorney to do a patent search – the inventor will not know what the Federal Statutes require in order to be patentable and to overcome prior inventions or combinations of prior inventions.

  17. Anon March 29, 2016 7:04 pm

    Friendly (non) attorney advie to Floyd:

    Do not use the words “Attorney advice to inventors” on an open forum.

    Do you really want people to think that you are establishing a client/attorney relationship?

    Nest I would study more the law itself and where that law is extremely weak: an improvement on someone else’s invention.

    Such improvements do not even have to rise to the level of being non-obvious over the first invention in order to shred the first inventor (if that first inventor fails to file first).