Congress, lobbied by large multinational corporations, is on the verge of passing bill HR1249, the “America Invent Act” a great threat to the ability of our country to innovate. Our patent system, a carefully balanced system that has made America the envy of the world is about to be dismantled.
This new bill replaces the first to conceive by a first to file system. It recognizes the first person who submits an invention to the patent office as the true inventor.
The bill also eliminates the one year grace period defined as the time interval starting on the day that the inventor shows, sells or offers to sell his invention to the public, and ending on the day he files it. During the grace period the inventor retains ownership of the invention as long as he can prove that he diligently worked at developing it and did not abandon it. The grace period provides free protection to the inventor, even before a patent application is filed, and is a deterrent to anyone else who may be tempted to copy the invention. It allows the inventor to talk about his invention, solicit funding, discuss it with designers and manufacturers, approach distributors, run focus groups, perform small market runs etc.
While the first to conceive part of the bill may be likened to the bathwater because the number of inventors who actually rely on the conception date vs. the filing date is extremely small (less than 100), the grace period is the baby about to be thrown out. Its elimination tilts the playing field in favor to multinationals and market incumbents and is detrimental to small inventors and innovators in the following ways:
1) Inventors will race to the patent office to file, often before their invention is fully developed, resulting in additional expenses.
2) Small inventors will be placed at a disadvantage with respect to large companies who have all the engineering, manufacturing, marketing and financial resources to bring an invention to market.
3) In case of IP theft, the bill allows an inventor to dispute the rights of the thief, but only if the thief patents the invention. Proving theft is extremely difficult and the inventor will be at a great disadvantage. Stopping theft will be impossible if the thief opts not to file for patent.
4) A single offer for sale or public demonstration one day before filing a patent application can irretrievably destroy the ability of an invention to be patented.
5) The bill is poorly written, favors large corporations, and will result in numerous lawsuits.
6) The real problem at the patent office is the lack of funding caused by the diversion of filing fees to other government activities. The bill does not stop this practice.
H.R. 1249 is a job killing bill opposed by a many small business and individual inventor that includes the National Small Business Association, the IEEE-USA (the country's largest society of engineers), the U.S. Business and Industry Council and others. These smaller American business advocates all say that Congress should drop H.R. 1249 and its provisions written by large multinationals and pursue instead a bill that benefits the entire country. This is especially important since smaller American businesses have to create new jobs to replace the jobs outsource by the multinationals.
Please tell your congressman or congresswoman how, you, the small inventors, businesses and startups need a strong patent system to create new products, jobs, and wealth. Please urge him or her to oppose this bill for the above stated reasons including its effect on the grace period and its deleterious effect on innovation in this country. Telephone calls are more effective than emails but I have included information for both. In the San Diego area the persons to call are:
Senator Barbara Boxer: (619) 239-3884
Senator Dianne Feinstein Phone: (619) 231-9712
Fax: (619) 231-1108
Representative Susan Davis: (619) 280-5353
Fax: (619) 280-5311
Representative Duncan Hunter: (619)448-5201Email: https://forms.house.gov/hunter/webforms/zipauthen_presidential.shtml
Representative Brian Bilbray: (858)350-1150
Representative Darrel Issa: 760-599-5000
Bob Filner (619) 422-5963
For more information about this topic go to the excellent article by David Boundy at Patent Docs.
For the presentation that I gave at the San Diego Inventor’s Forum on 04/14/2011 go to http://www.patentsandventures.com/presentations
For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.
If you have any question you can contact me at (858)259-2226 or email me at email@example.com.
This newsletter should not be construed as being legal advice. ©2011 by George Levy