The America Invents Act was Wrong from the Start

By Adrian Pelkus
January 9, 2017

American Flag thumbs downCongressman Darrel Issa was the guest at a town hall meeting held at AMN Healthcare in San Diego when he first began pitching the America Invents Act (AIA). I was in the audience. Of those attending, less than a handful were actual inventors. Many were attorneys, but most were socialites following the man who donated $2 million in 2003 to recall Governor Gray Davis in an attempt to replace him. (Arnold Schwarzenegger was elected instead). Few in the crowd had any understanding of the damaging consequences of the America Invents Act.

I am professionally a new product developer and the named inventor on 14 issued patents. I have spent decades inventing and helping hundreds of inventors and startups. All that was needed to protect IP at the earliest stages was to keep an accurate notebook documenting, illustrating, signing and witnessing the process of developing an idea into an invention. This 200 plus year old method was tried and true. I was taught this method when I was an engineer and taught it to engineers that I hired at my business. Their properly documented Laboratory Notebooks became valuable intangible assets. There was no need to change it!

Before the America Invents Act, an inventor’s idea was developed into a proof of concept and business models were vetted for the probability of commercial success at a minimal cost. To refine an idea into a commercially viable invention, inventors must disclose an invention to neighbors, relatives, friends and other early stage investors as well as multiple vendors, prototypers, suppliers, and others. The inventor was free to do this prior to the AIA because there was a 12 month grace period to file for a patent.

This grace period saved thousands of dollars of upfront costs because a patent did not need to be filed until after the idea was fully refined and determined to be commercially viable. After all, if the idea can’t be produced at a profit or if buyers will never buy it, why patent it? No small inventor can justify spending thousands of dollars on an idea with no way to know if it will ever bring a profit.

But that is what the America Invent Act has forced inventors to do.

Congressman Issa began his campaign for the America Invents Act heralding the “benefits” of changing our patent system from a “First to Invent” system, which had been a core tenet of our system for hundreds of years, to a “First to File” system used in many third world countries. When Issa said in that town hall meeting that “First to File” was needed to “harmonize” our patent laws with other countries, I immediately stood and expressed my dislike of “dummying down” our system. A spattering of laughter diluted my point allowing Issa to rebuff me with a short retort about international cooperation and then move onto the next question.

In fact, no inventor testimony was taken into consideration by Issa or Congress during the debate and passage of the America Invents Act. This was frustrating because the patent system is intended to encourage inventors to promote the progress. But we were shut out of the debate.

If inventors had been heard, Congress would have understood the damage they were bringing on America’s job creation engine. The fear that unscrupulous people can take advantage of the new laws and become first to file is very real to inventors. So now the path, the beauty and the fun of inventing and creating by collaborating with friends and associates, colleagues and mentors, engineers, makers and designers is lost to the fear of having to file for a patent before confiding in anyone.

I meet weekly with inventors asking for help to profit from the labors of their minds. Most have never heard of the America Invents Act until I explain it. I make it a major topic at every San Diego Inventors Forum meeting. We also discuss it at the local Maker Faire and recently won an award for raising awareness.

Inventors come with an idea they believe can be commercialized. They want to create jobs. They optimistically count the dollars of profit! Most have naively talked about their idea to anyone and everyone they could before getting coached. The news is unfathomable that our own government changed the law to require them to pay huge patent filing expenses upfront to protect their yet unvetted ideas before even beginning to develop the invention. Most consider it a betrayal because they don’t have thousands of dollars to put at risk while it is still unknown if the invention is commercially viable.

But, First to File was just the beginning of the damage caused by the America Invents Act. When the concept of the Patent Trial and Appeal Board (PTAB) is fully understood even more quit. Their American Dream goes up in smoke because bad legislation tilted the patent system in favor of large multinational corporations.

The AIA was wrong from the start. Forcing creators to file for patent protection first is economically and emotionally thwarting innovation, creating an air of distrust and ultimately disincentivizing inventors. The proof is when I see an inventor excited to begin an entrepreneurial venture realize they cannot afford to take the first step and end their efforts in disappointment.

Inventors are the architects of our future. Our country was built with the belief and right that we can profit from the labor of our minds. The AIA has created a toxic swamp of quicksand laws for inventors and startups that is crippling the economy by stifling innovation for generations to come.

The AIA must be repealed lest we lose our job creation engine forever.

The Author

Adrian Pelkus

Adrian Pelkus is an inventor with 30+ years experience developing over 300 different electronic products and high technology processes that have helped startup several technology companies. Mr. Pelkus is named inventor on fourteen issued U.S. Patents including the "Baby Think it Over" infant simulator, a “Thin Film Flexible Solar Cell”, the FDA cleared "Jaw Elevation Device" and O2MislyTM Wound Treatment System. In 2005 Mr. Pelkus reorganized the San Diego Inventors Forum now a 501(c)(3) to help startup entrepreneurs. Mr. Pelkus serves on the Board of Directors of both United Inventors Association of America (UIA) and US Inventor, organizations dedicated to assisting and educating inventors.

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 16 Comments comments.

  1. step back January 9, 2017 10:18 am

    Adrian,

    I feel your pain.

    Actually the war of attrition against the American inventor began long long ago, perhaps in another galaxy. The 2013 AIA is merely a stepping stone in a path that traces back way further.

    Congress critters of course, rarely tell a truth. The AIA was not the first “comprehensive” reform in 200 years. Pure BS.

    Try stepping back to 1995 and before, when the 17 year term was replaced with 20 years from filing in order to bring “harmonization” to the US (read that as “harm-mah-nation”)

    https://en.wikipedia.org/wiki/Term_of_patent_in_the_United_States#History

  2. American Cowboy January 9, 2017 12:20 pm

    Step, I hate do disagree with you but “harmonization” is not to be read as “harm-mah-nation”.

    It is more accurate to say “harm-our-nation.”

  3. Whewell January 9, 2017 2:08 pm

    I agree. If it were up to me, I’d repeal AIA, its harmed the patent system analogously to how Clintoncare or Obamacare, whatever they call it, has harmed health care.

  4. Gene Quinn January 9, 2017 2:23 pm

    AC-

    “harm-our-nation”

    Times like this I wish we had a LIKE feature.

    Of course, as crazy as it sounds, I’d actually be all in favor of the U.S. substantively harmonizing patent law with the EU and China currently. Far more would be patentable in America if we substantively harmonized, which is as pathetic as it is unbelievable. How did we get to the point where far more is patentable in the EU and China than in the US?

  5. Inventor Woes January 9, 2017 4:03 pm

    The author mentions that there was once a 12 month grace period. Isn’t there still one under the AIA? I thought there definitely was one…

  6. angry dude January 9, 2017 11:23 pm

    Actually, most independent inventors are OK with first-to-file – provided that cheap provisional applications are available.
    In this shameless age when all kinds of evidence including lab notebooks gets manufactured or doctored, it is important to have a 100% proof of priority date
    – not disputable by any monkey courts later on
    I remember in some famous case in re-exam proceeding (NTP vs RIM ?) some party provided “prior art” ” from some library with some doctored pages..

    Heck, in my own case, some academic dude backdated his “research” paper to read on my patent…
    Do you really want to have something like carbon dating of your lab notebooks as part of patent infringement lawsuit ?
    What can be worse than that ?

    I say, first-to-file (relatively) cheap provisional patent application (no examination by PTO) followed in 12 months by (expensive) regular patent application

  7. Benny January 10, 2017 6:03 am

    “…“First to File” system used in many third world countries” ? While I accept the premise that France is little removed from the concept of a third world country, I don’t think the same can be said of the UK, Germany, and the other 35 member states of the EPO. Can you name another jurisdiction where “first to invent” is the rule of the road?
    As for harmonization, I suggest the US start with the metric system, as is commonly used in many third world countries.

  8. Edward Heller January 10, 2017 8:45 am

    Adrian, I have to wholeheartedly agree. But I would like to give you one more angle – and that the purpose of the American patent system from the beginning was would provide incentives for American inventors to invent in America in order to promote progress of the useful arts in America. Thus, our initial patent statutes only allowed American citizens to hold patents. We also provided, in later statutes, that only prior invention in the United States counted.

    Beginning, I believe with GATT-TRIPS, we begin to give away the crown jewels. First we extended the right to prove prior invention to NAFTA and WTO countries. Then, in 2011with the enactment of the AIA, we eliminated all remaining advantages for inventing in the United States.

    No doubt Darrell Issa was moved by the prospects of international cooperation. He after all was wined and dined by elites and seemed to be relatively unconcerned as to whether removing advantages to inventing in the United States was a good thing or not, let alone whether individual inventors might be adversely affected by a first to file system.

    All that said, for very long time interferences have been a protracted waste of time – with the first to file normally winning. I think we can get rid of interferences while retaining a grace period whereby American invention is alone recognized so that only American inventors received the benefit of the grace period. This America-only grace period is particularly important where large corporations are deciding where to locate their R&D operations. By granting a grace period to American inventions, these R&D managers would be more likely to keep R&D jobs in the United States.

    Thus I suggest we consider a grace period amendment to the AIA along the lines of the following suggestion. Note, in the proposal, the first to file a claim to the invention prevails when two inventors are seeking to patent the same invention. Otherwise, prior invention eliminates all prior art for one year prior to the filing date.

    One-Year Grace Period for Prior Invention in the United States

    (a) Prior art having a date less than 1 year prior to the effective filing date of claimed subject matter shall not be effective prior art against such claimed subject matter that is

    1) conceived or reduced to practice in the United States prior to the date of said prior art; and which is

    2) not reduced to practice in the United States more than 2 years prior to the effective filing date of the claimed subject matter.
    (b) In the event that 2 different United States patents disclose and claim the same subject matter, the subject matter of the first to claim the subject matter shall be prior art with respect to the second to claim that subject matter.

  9. Edward Heller January 10, 2017 8:50 am

    Gene, harmonization has gone a long way to undermining the best patent system in the world. It is not and has never been a good thing for American inventors. It is been forced upon us by international elites for their benefit alone.

  10. American Cowboy January 10, 2017 10:03 am

    After WW2, the USA was the undisputed strongest economy in the free world, and the strongest economy in the entire world. That enabled enormous progress by US companies and citizens and enabled the US government to be magnanimous to other countries all over the world, as in: Reconstruction of Japan, the Marshall Plan, foreign aid to countries all over the world, treaties like NATO, SEATO, ANZUS and the like that committed the US to come to their defense. We made “free trade” treaties that enable countries all over the world to have more access to US markets than US manufacturers get in their markets. Although we did not ‘welcome’ illegal immigrants, we tolerated them. Another piece of this giveaway was the entry into a number of IP treaties that disfavored US inventors, compared to the status quo. When we were that much stronger than everyone else, we could pay all of these prices and still prosper, live well, and expect the next generation to live better than the current generation.

    Well, that big advantage has dissipated woefully, and it is time to halt the giveaways, and reverse those that we can. This is what the Trump phenomenon is all about. I hope the IP community can help him see that our piece of the economy also needs his attention to correct too-generous giveaways of the past.

  11. Benny January 10, 2017 10:45 am

    AC,
    You are taking a restricted view of the economy. Globalization has penalized American manufacturers, but their loss is offset by offshore operators gain. The standard of living in many Far Eastern countries has risen sharply as a result of their increased share in innovation and manufacturing, and the standard of living of our generation is higher than that of our parents’, in no small part because of our access to goods produced, and in many cases designed or invented, in a different time zone. Occasionally you might like to take a glance beyond the end of your figurative nose.

  12. step back January 10, 2017 10:51 am

    American Cowboy @10

    Maybe on another day Gene will post something about American foreign policy visa vi IP policy.

    However the post here by Adrian Pelkus is about the domestic Fifth column inside our very own borders and more so inside of Washington DC itself. We have Congress-critters who appear to be bought and paid for by large corporate interests doing their best to destroy the independent American inventor. That’s what Mr. Pelkus is writing about; how the AIA forces many small independent inventors to quit even before they start because the protections they used to enjoy (i.e. 1 year grace period, first to invent) have been stripped away so as to serve the clarion call of “harm-our-nation”.

  13. American Cowboy January 10, 2017 11:24 am

    Benny says: “. Globalization has penalized American manufacturers, but their loss is offset by offshore operators gain. The standard of living in many Far Eastern countries has risen sharply as a result of their increased share in innovation and manufacturing.”

    My point exactly. Years ago we could afford deals that penalize domestic producers, but not any more.

    “the standard of living of our generation is higher than that of our parents’, in no small part because of our access to goods produced, and in many cases designed or invented, in a different time zone.” Yes, we can send welfare checks to the unemployed so they can go to WalMart to buy Chinese manufactures. What a winner!

  14. Ken Stanwood January 10, 2017 6:03 pm

    Good points on first to file, Adrian. For me, first to file has been more of an annoyance. I’ve been fortunate to work in situations where we could speculate more, allowing a lower market confidence threshold before spending the filing fees. Additionally, we at least had a team to bounce things off of while still at the trade secret stage. Individual inventors don’t have those luxuries and are hurt more by first to file.

  15. Adrian January 13, 2017 10:29 am

    A good sign is the number of inventors now talking about AIA is increasing at our SDIF meetings. We make patent reform a central topic in our newsletter. http://conta.cc/2iW9zkw
    Lots more gasps of horror regarding recent USPTO decisions during last nights meeting and ensuing discussions.
    After the meeting local attorneys asked me questions.
    I referred them to this site to learn more and see how their peers think.
    Thank you Gene for this site and opportunity to speak for independent inventors as one.

  16. step back January 13, 2017 2:22 pm

    Adrian,

    I don’t think the average inventor understands how his or her Constitutional rights are being trampled over by the very people who are supposed to be protecting those rights, namely the Supreme Arrogant Hubiristic Courtesans of Washington Don’t Care (aka DC).

    The correct answer for when Justice Kennedy asked in Alice, Suppose I thought I could pick any 2nd year engineering student in a coffee shop and … blah blah blah, would have been this: Well your High Holiness and esteemed Justice, then I would have to suppose that you are a completely clueless moron, but you wouldn’t want me to think that way would you?

    Of course, when you are a high priced appellate lawyer and shaking in your shoes up there at that podium while being peppered with wise ass questions from the smug judges, you can’t do that. You have to lower your head and kiss their rings.

    Oh your honor, you are so wise and just. Why yes Justice Breyer, King Tut did indeed have a magical abacus man who could instantaneously keep track of all the chits in the kingdom of ancient Egypt (even though electronic communications hadn’t been invented). You too are so wise and just. You are right. Inventors are subhumans and have no right to legal counsel. Yes those patent attorneys/agents are nothing more than the devil’s scriveners trying to disguise abstractness in obtuse claim language. Your magic crystal on a string does indeed demonstrate what the claims are truly “directed to”. Pure abstractness. Thank you for destroying all my Constitutional rights your Holiness. May I kiss your ring once more?

    And so it goes.

    https://patentu.blogspot.com/2017/01/depriving-inventors-of-legal-counsel.html