New Tillis-Leahy Bills to Boost Innovation: The Good, the Bad and the Nonsense

By Gene Quinn
September 21, 2021

“The Unleashing American Innovators Act is a worthwhile idea and provides provisions that would help small businesses and independent inventors. The Pride in Patent Ownership Act is more one-sided nonsense.”

Earlier today, U.S. Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the Ranking Member and Chair of the Senate Intellectual Property Subcommittee, introduced a pair of bipartisan bills that the Senators say are aimed at improving the participation Americans from all backgrounds in the patent system and ensuring that the public knows the true owners of patents.

A Potential Boon for Small Inventors

Leahy-Tillis

Senator Patrick Leahy (left) and Senator Thom Tillis

If enacted, the Unleashing American Innovators Act (UAIA) would require the Director of the United States Patent and Trademark Office (USPTO) to establish another satellite office within three years somewhere in the Southeastern region of the nation, which the bill specifically defines as Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas. Of course, given that the main campus of the USPTO is located in Alexandria, Virginia, it would seem unlikely that Virginia would be the final destination of any Southeast Region satellite office. The UAIA would also require the Director to determine within two years whether any additional regional satellite offices are necessary to— in the words of the bill— “achieve the purposes described in section 24 23(b) of the Leahy-Smith America Invents Act… and increase participation in the patent system by women, people of color, veterans, individual inventors, or members of any other demographic, geographic, or economic group that the Director may determine to be underrepresented in patent filings.”

In addition to updating the patent pro bono program and establishing community outreach programs, the UAIA would establish a pilot program that would give first-time patent applicants a patentability assessment they could use to determine the viability of filing any patent application. How that would differ from a patent search and assessment from a patent practitioner would remain to be seen, although the terms of the bill, which mentions a possible referral to the patent pro bono program, seems to envision some kind of means testing. The UAIA would also allow the USPTO Director to reduce small entity fees to 75 cents on the dollar and micro-entity fees to 90 cents on the dollar compared to the full fare fees for large entities.

Invent Together, an initiative aimed at “understanding the gender, race, income, and other diversity gaps in invention and patenting and supporting public policy and private efforts to close them,” applauded the UAIA. “This legislation will help ensure that the United States remains at the forefront of global technology leadership by giving everyone a seat at the table and providing meaningful support to first-time and underrepresented inventors,” said the organization’s Executive Director, Holly Fechner, in a statement.

One-Sided Solution 

Meanwhile, according to the Senators, the Pride in Patent Ownership Act (PPOA) would ensure that the public has access to information about the true owner of a patent. The press release sent out today along with the legislation explains, correctly so, that to uncover the identity of the beneficial owner of a patent, parties sometimes must engage in costly, time-consuming litigation. Of course, given the way the laws and rules have developed under the America Invents Act (AIA), it is impossible to know which parties are benefiting from invalidity of a patent at the Patent Trial and Appeal Board (PTAB), and thereby a real party in interest in any rational sense of the term. Predictably, the PPOA only addresses ownership of patents, and does not seek to provide true transparency that would be a two-way street identifying those funding and benefiting from PTAB challenges.

The press release associated with the PPOA explains that the lack of transparent patent ownership information creates a disadvantage “to small businesses that may simply want to contact a patent owner about getting a license but have no way to know who to contact.” The presentation of this concern as unique to small businesses is a stretch, at best, and seems most likely to have been added as a talking point to make this bill seem more palatable to popular press and those with only casual or drive by interest.

The PPOA, by its explicit terms, is aimed at requiring information relating to funding provided by foreign entities and governments because presently, the press release explains, “there is no way to know how many patents are later sold to foreign entities, preventing Americans from even knowing how we are competing globally in innovation.” Of course, the amendment to 35 U.S.C. 261 contained in the PPOA does not simply apply to foreign entities and foreign governments and would require all patent owners to record any interest obtained in a patent within 90 days or forfeit the right to recover for infringement during the period the interest remained unrecorded.

It is no great mystery how America is competing globally. In one word— poorly.

With a Supreme Court that has been hostile to the patenting of new and cutting-edge innovations (i.e., biotechnology and software), a Federal Circuit that has doubled down on Supreme Court precedent and followed the Nations High Court into the patent abyss, and a Congress that has been AWOL on the most important innovation issues of this generation, it is tragically comical that anyone thinks knowing what foreign entities own will provide any insights into American competitiveness.

A Hit and a Miss

In short, the Unleashing American Innovators Act is a worthwhile idea and provides provisions that would help small businesses and independent inventors. The Pride in Patent Ownership Act is more one-sided nonsense that demands one-sided transparency from patent owners while trying to convince the public it will benefit small businesses. What would benefit small business, R&D and job creation is a coherent patent policy that recognizes that the innovations of tomorrow are patentable in the United States the same way they are in Europe and China.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 14 Comments comments. Join the discussion.

  1. Greg DeLassus September 21, 2021 7:11 pm

    “ The presentation of this concern as unique to small businesses is a stretch, at best, and seems most likely to have been added as a talking point to make this bill seem more palatable to popular press and those with only casual or drive by interest.”

    This is generally true of all patent-related bills. Invariably they are sold as geared to help small business, but the connection of X to the needs of small businesses is always nonsensical and illusory.

    I do not see that any of the legislative proposals described above will be useful to small businesses. Why would small businesses care about a satellite office in Atlanta or some such? Why would a small business qua small business care about gender gaps in patent grants? None of the above speaks to any issues that impact small businesses qua small businesses.

  2. Pro Say September 21, 2021 7:21 pm

    While the American innovation ship sinks ever deeper due to the inability to obtain critically important patent protection for ALL areas of innovation . . . Congress continues to rearrange the deck chairs.

  3. Josh Malone September 21, 2021 7:40 pm

    I love Section 6. Aspiring (and under resourced) inventors can get a fake certificate that says maybe they can get a fake patent.

  4. B September 21, 2021 8:19 pm

    The house is burning? Let’s re-arrange the furniture

    I am not impressed by either piece of legislation.

  5. Curious September 21, 2021 9:16 pm

    I love Section 6. Aspiring (and under resourced) inventors can get a fake certificate that says maybe they can get a fake patent.
    Pretty much nailed it — and that is the only halfway “useful” thing in this bill.

  6. Pro Se September 21, 2021 10:54 pm

    Thanks for the writeup Gene, first thought for me though is: AIA Poverty Pimping.

  7. Jeff Hardin September 22, 2021 4:46 am

    When is Congress going to listen to the very inventors they say they want to help, and introduce legislation to address their post grant concerns? The AIA threw these inventors out with the bath water, and knowledgeable inventors are becoming aware.

    Evidence of this can be seen in the SUCCESS Act study, where over 75% of underrepresented inventors expressed that post-grant enforcement concerns are a barrier to pursuing patents. (What good is a patent if you can’t defend it?)

    I included this very revelation in my statement to the Senate Judiciary Committee in April 2021 on “Improving Access and Inclusivity in the Patent System:
    Unleashing America’s Economic Engine”

    Link: https://drive.google.com/file/d/1NXgeP5PY25qG1jd7LqNOX6yP7e4njMnP/view?usp=drivesdk

    It would be a shame if Tillis and Leahy continue to ignore the voices of the underrepresented. As one SUCCESS Act witness put it:

    [A]lthough pursuing equal opportunity with women, minorities, and veterans in obtaining
    a patent is a valuable effort, if it does not coincide with equal outcome in one’s ability to utilize the patent once received, regardless of the person’s financial state, telling women, minorities, and veterans that they stand to benefit from a patent will simply be false
    doctrine.
    https://www.uspto.gov/sites/default/files/documents/SUCCESSAct-Hardin-Duran.pdf (Attachment 2)

  8. Model 101 September 22, 2021 10:02 am

    Lipstick on a pig.
    Boobs on a bull.
    Not even a bandaid fix.
    Screen door on a submarine on the ocean floor.
    Pimple on the ars of progress.

  9. Anon September 22, 2021 10:37 am

    Maybe this is one of those “we can’t fix the real problems, so let’s put up some window dressing, call it a good thing (when it is not) and forget about those real problems” types of things that poor Josh Malone can get behind and use to ‘repair’ his Washington Insider status.

    (and in case it was not clear, here: /s)

  10. PTO-indentured September 22, 2021 12:10 pm

    A Welcoming Pre-Grant, but Not So Post-Grant?

    We welcome with open arms (pre-grant) a greatest diversity of Americans: extending ‘equality to all’ first-timer micro-entity and small-entity entrants — who will then find their AIA-made unreliable patents (post-grant) get efficiently infringed and/or invalidated by one or more large-entities — precisely in the same way less diverse US inventors found before them!

    AIA has unleashed, fostered and continues to perpetuate a US patent ‘caste system’ — a double-standard, thus prejudiced one. These bills will take no longer than but a few, new entrant pre-grant to post-grant enforcement attempt cycles, to see the AIA patent system is biased against them (just like it has been to small US inventors for a decade).

    The proposed bills, being focused essentially on what happens prior to issuance of a US patent i.e., ‘pre-grant’, fail to take into account how it is that US inventors, whether new or seasoned, are realistically expected to survive or subsist. When and where will we bring into the realm of reason what will work for the second half of the equation — how your newly welcomed entrants actually / realistically ‘get paid’ (just like every other contributing human being expects). Until we do, we disingenuously invite entrants into a US patent system too often known to leave those — who would ‘dare’ to attempt (most-often) a fair return — hanging, under the harsh realities of an AIA-fostered post-grant world.

    Seemingly welcoming a new diversity in a first half of an equation, then clearly demonstrating a severe ‘class’ prejudice / double-standard bias in a second half of the equation (proven to favor big entities) — is a shallow, if not devastating welcoming.

    In comparison, ‘one more satellite office’ within two years and/or ‘two perhaps within three years just looks like ‘fluff’, if not a major distraction from a realistic, substantive remedy truly needed.

  11. Jacek September 22, 2021 1:47 pm

    It would not be a brilliant idea to take the $450k needed to defend each IPR,
    go to the EU and start a business there with a $ 2,250,000 budget instead?

    They have programs granting 80% on each dollar you invest.

    Instead of a $450k loss on lawyers fees in the US, you may use the funds efficiently for your and the hosting country’s LONG TERM benefit.

    Enough of Tilli and Leahy BS
    Do they own this train wreck US system?

  12. patent person September 22, 2021 3:41 pm

    With respects to the PPOA, the word “interests” seems oddly ambiguous. Note how the first line says “Applications for patent, patents, or any interest therein” and not “ownership interests”.

    Later on in the last paragraph it says “An interest that constitutes an assignment, grant or conveyance…” this implicitly states there may other types of interests. Thus, the question is as follows:

    Is the PPOA a vehicle by which to ultimately force disclosures of contractual / beneficial / financial interests in patents wherein the goal is to go after litigation finance and other supporters of monetization?

  13. B September 23, 2021 2:54 pm

    @ Greg “Why would small businesses care about a satellite office in Atlanta or some such?” Why would a small business qua small business care about gender gaps in patent grants?”

    Good questions.

    I assume they’re rhetorical

  14. PTO-indentured September 25, 2021 2:35 pm

    Distortion — to the point of extortion

    In this century, ’our’ congress appears to act:

    ‘As if’ our founding fathers’ vision of a US patent system was meant to ensure — for a favored few elite corporations — guaranteed paths to trillion dollar value / oligarch status, and that such unprecedented prowess should be bolstered by each (or most) amassing thousands of patents. ‘As if’ our founding fathers had envisioned that those, in whose hands the reins of patent system stewardship and decision-making powers would be given, would be the very members of congress regularly and repeatedly receiving up to hundreds of thousands of US dollars in ’contributions’ from the oligarch status corporations. ‘As if’ our founding fathers’ vision for US innovation foresaw — such few corporations, ’with a wink and a grin’ could back, in a campaign lasting over years, and calculated to be well into the nine-figures: a biggest paid-for lie in the history of the US patent system. That the aim of such a lie would be a demonizing and denegrating of the individual US inventor to an alleged ‘lower class’ entity or God-forbid even an ’NPE’ (just like some oligarchs today) where ‘US inventors’ — over and over and over again shoud be blamed for a demise in the US patent system. ‘As if’ our founding fathers could imagine that congress, the courts at all levels, the USPTO itself, and Americans would fall for such a lie — never substantiated, never backed by empirical data — hook, line and sinker.

    It is no consolation to US inventors, that ’The Campaign’s’ deep impact and lasting hold over US patent system decision makers was not a ‘fear’ response. Rather, it was an ‘anxiety’ reaction — which behaviorists know has all the symptoms of fear, but doesn’t require any real, concrete object causing it. Thus it is no consolation in this century — where the US patent system is concerned — that the cause of its caste system / double standard, thus prejudiced practices is: a mirage.

    That’s how the distortion was set up, here’s how extortion was set up:

    ‘The Campaign’: whipped up sufficient anxiety-driven fervor to create and launch AIA, which falsely set up and empowered the PTAB, whereby the latter gave birth to an ‘all-new’ unreliability of US patents, to a large degree the result of a PTAB Patent Death Squad effort (some would say, mandate) to invalidate US inventor patents by the thousands. This set into motion efficient infringement, which, casting honor to the winds enabled large US corporation to operate under a we-will-use-unless-and-until-you-sue M.O. and a “Mr/Ms US inventor, you better be able to do such suing at a $3M-$4M (est.) cost per case under a magic AIA-influenced threshold, proven to keep almost all US inventors out of court. Which, conveniently allows AIA to magically give credit to the PTAB for “reducing litigation costs” — because a vast majority of US inventors (post-grant) guess what? Can’t ‘Pay to Play’ you’re out of business, and in many instances following a notice of allowance pre-grant, will lose everything post-grant based on one or more US issued patent.

    So, next time someone wants to cite the patents clause in the U.S. Constitution and allege what was envisioned by our founding fathers in that clause, let’s ask what would they think about the above outcomes reached in this century, and the stewardship leading to and fostering them.

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