I’ve read a lot of disingenuous articles about the U.S. patent system and how patents are bad, indeed practically evil. But rarely have I read something quite as misleading as the recent article authored by Colleen Chien published in the Washington Post. The premise of the article is that it is time to open the patent system. Specifically what that means, and to what end that would be useful, is unclear and frankly unexplained.
For those who are not knowledgeable about patent laws and the U.S. patent system Chien’s suggestion probably sounds like a good idea. After all, Chien argues that it is impossible for someone to donate their technology without fearing that another will get a patent on it and defeat the well-meaning donation to the public. Such a statement plays into urban mythology and preys upon those who are convinced that patent applicants can and do steal innovations and get patents instead of the rightful inventor. If that were actually true I’d be all in favor of opening up the patent system, whatever that means. Unfortunately, Chien builds her argument on a factually erroneous foundation.
The problem I have with Chien’s argument starts with her premise, which is entirely incorrect. There is nothing stopping anyone from donating innovations to the public. Further, Chien has it precisely backwards. If an innovation is disclosed to the public it is impossible for anyone else to patent it, period. Chien has to know this.
Let’s back up for a minute and start with Chien’s premise, which is summarized in the article as follows:
If an inventor wants to open her technology for others to innovate without worrying about permissions, there is no way to guarantee that the Patent Office will not issue a patent over the technology to a later applicant, an issue that goes to patent quality.
Chien’s statement seems flat out false, and I’m sure many on the pro-patent side of the aisle will believe her statements to be intentionally false and intentionally misleading. As puzzling, and incorrect, as this statement is I am reluctant to jump to malice as the explanation. Long ago as a new attorney I was taught by my primary mentor that you should never allege malice when incompetence is a perfectly possible alternative explanation. He would tell me repeatedly that most people are not malicious, but a lot of people are incompetent. Despite my wanting to give Chien the benefit of the doubt, I admit that it is difficult to imagine characterizing Colleen Chien as incompetent. Notwithstanding, what I can say beyond any shadow of a doubt is that this article and the above premise is horribly misleading.
Anyone with even a passing understanding of patent law has to know that it is completely incorrect to claim that the Patent Office will issue a patent to a later applicant when the innovator has made the innovation publicly available. Such a bogus and provably false assertion to the contrary raises legitimate questions. Obviously, Chien is someone who is well acquainted with patent laws and the U.S. patent system, so why would she make an assertion that seems to ridiculously false on its face? What is her agenda?
For those who are not well versed in the nuances of patent law and the U.S. patent system, allow me to explain why Chien is wrong, in fact dead wrong.
For many generations, in fact since the Patent Act of 1793, there has been a requirement of newness (or novelty as it is called in the industry) in order to obtain a patent. In other words, for well over 200 years it has not been possible to obtain a patent on an invention that already exists. So how Chien thinks the Patent Office can issue a patent once someone has opened up their technology to the public is unclear and unexplained. Is she really unfamiliar with the concept of novelty, which has existed in patent law for at least the last 222 years? Doubtful. Nevertheless, the way the premise is worded is certain to cause the reader to believe things that simply are not true.
To be fair, over the last 222 years the idea of what constitutes the required newness has changed. Perhaps the most drastic change over that span occurred in March 2013 when the United States abandoned the first to invent rule and adopted a first to file rule. As a result of the passage of the America Invents Act (AIA) the patent laws in the United States changed dramatically. While the Act became law on September 16, 2011, the first to file provisions did not become effective until March 16, 2013.
Effective March 16, 2013, filing a patent before there has been any public disclosure of the invention is of paramount importance. It is true that there is an extraordinarily narrow grace period of 12 months that still remains, but applicants for a patent are entitled to the benefit of that grace period only in extremely limited circumstances. For example, an applicant can claim entitlement to a grace period if they disclosed their invention first and before they filed their own patent application there was an intervening disclosure that describes the first inventors invention. In certain of these circumstances the first inventor who disclosed would still be entitled to a patent despite not having filed prior to their own disclose. In order to prevail and remove the intervening disclosure from the universe of prior art the first inventor has to demonstrate that the intervening disclosure was derived from the inventor and actually describes their invention. If there are any difference between the intervening disclosure and the disclosure by the first inventor at least those differences will be used against the first inventor. Thus, the grace period is now extraordinarily limited.
Significantly, there is no provision that would allow the intervening party to file for a patent application and remove the prior disclosure of the first inventor. Someone who files a patent application after there has been a disclosure of the invention will have their application denied because it lacks novelty. See 35 U.S.C. 102. Thus, the claims of Colleen Chien, Elon Musk and others who say that patents are sought because that is the only way to prevent others from obtaining a patent are false. If you invent something and you want to prevent someone else from patenting the invention all you have to do is publicly disclose the invention, such as by publishing a description of the invention. It really is that simple.
Simply stated, there is no way that the Patent Office should issue a patent covering the previously disclosed innovation. If the Patent Office does issue such a patent it is a mistake. To correct these mistakes in a more timely, efficient and cost effective manner the America Invents Act created new procedural mechanisms that do not require a lawsuit in federal district court. These new procedures were universally sought and praised by high-tech companies and others as a way to efficiently correct mistakes. So unless Chien is building an argument based on the inevitable reality that no one is perfect, including the Patent Office, her conclusion is erroneous. Perfection is never possible, which should be self evident. Assuming the law is followed, today it is impossible to obtain a patent on an innovation that someone else has previously disclosed.
The only other possible justification for what Chien claims is that she sees a problem because it is possible to improve upon an innovation and obtain a patent on the useful, new and non-obvious improvement. Having a problem with the patentability of improvements would be curious though. Improvement patents have been a part of the U.S. patent system since its beginning, again at least since 1793 when none other than Thomas Jefferson wrote the Statute saying a patent can be obtained on “any new and useful improvement…” So if Chien is taking aim at improvement patents she is taking aim at the wisdom of Thomas Jefferson, which should cause any reasonable person to think twice.
If Chien has an issue with the patentability of improvements she is also takes aim at none other than Thomas Edison, who is widely regarded as the greatest inventor in U.S. history. It is well known that many of Edison’s greatest inventions were improvements upon previously existing innovations. In fact, Edison’s greatest invention, the invention of the light bulb, was actually an improvement of previously existing light bulbs. Edison improved upon the technology by developing a light bulb that used a lower current electricity, a small carbonized filament, and an improved vacuum inside the globe. Edison’s improved light bulb lead to a reliable, long-lasting source of light. Prior to Edison’s invention light bulbs lasted only a few hours and now they could last 50 to 60 days, making them practical. So Edison invented the first commercially useful light bulb. An improvement, and one that certainly ought to be patented.
The entire reason for a patent system is to encourage innovation. The fact that improvements can be patented is precisely one of the features that cause innovation to march forward; it is a feature of the patent system by design. Is Chien really suggesting that no improvement patents should ever issue after someone dedicates a first, early innovation to the public? Such a bizarre suggestion is not only naive, it is utterly ridiculous. A first innovator does not and cannot have an absolute right to prevent the patenting of improvements they didn’t invent and couldn’t have conceived. Such a rule would turn patent law on its head and require a fundamental re-write of the patent laws, abandoning 225 years of history.
So what is Chien’s agenda? Is she trying to argue that improvements should be patented without directly asserting that as her goal? Is she arguing that the fact that the Patent Office isn’t perfect means that no patents should be granted if someone donates technology to the public? Is she simply making an over broad and provably false statement for some other purpose? I don’t know, but what I do know is that this article will cause readers to come to conclusions that are simply incorrect. Therefore, whatever the agenda or reason, Chien’s article is misleading and could cause unnecessary damage to the patent system if it is relied upon by decision makers.