By Nathan Hurst, Wired.com
http://www.wired.com/design/2013/03/america-invents-act/
On Saturday, around 18 months after President Obama signed it into law,
the Leahy-Smith America Invents Act will take effect. Ostensibly, the
act is designed to bring U.S. patent law in line with the rest of the
world. Of course, not everybody feels it will help achieve the patent
system’s goal of protecting inventors while fostering innovation, and
its effect could be even more pronounced on the DIY inventor.
Although the act includes a number of small changes, the meat of it is considered the biggest shakeup at the USPTO
since 1952. Formally known as H.R. 1249, the act was penned by Sen.
Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX), the duo who introduced
the Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA).
For product designers and makers and DIYers the proverbial monkey
wrench is being thrown into the mechanism for filing a patent — and the
timing with which you do so. Today, if you file a patent, someone can
come along and tell you they had that idea first, and with much
documentation and legal wrangling, deny you the right to apply that
invention. Tomorrow, nobody will care who came up with the idea first —
only who filed it.
It’s called “First to File” (as opposed to the previous “First to
Invent”) and it shifts the system’s emphasis from the date it was
invented to the date its inventor dropped an application at the patent
office. (It does preclude stolen ideas; it’s been more accurately termed
“First Inventor to File.”)
“It’s a big deal, and all the patent attorneys I know are busy right
now, filing applications before that goes into effect, Saturday, which
tells me that most of their clients are better off under the old
system,” says Robert Barr, a professor of intellectual property law at
UC-Berkeley, though he adds that some of the rush is simply due to
uncertainty about how the new law will play out.
“Under the old system, if you kept lab notebooks … you could prove
you were the first inventor even if you were not the first to file, so
you didn’t necessarily have to be the first to get to the patent
office,” he says. “Now, with a few exceptions, you need to be the first.
If two people come up with the same invention, and they often do … it’s
not going to matter if you can prove you were the first inventor if you
weren’t the first to file.”
Supporters of the law say that, in addition to aligning U.S. law with
the rest of the world, the act will speed up patent review and cut down
on the backlog of applications. The patent office offers steep
discounts to small businesses, and under the new law will offer steeper
discounts to entities with fewer than four patents. But the majority of
the cost of a patent remains in the fees associated with having it
written up by a qualified lawyer, and opponents worry that first-to-file
will favor big companies that can afford to apply for more patents,
more quickly.
“If you’re working out of your basement, you make a decision, hey I
came up with something clever, now I got to scrape together some money
to hire an attorney,” says Jonathan Withrow, a partner at IP law firm
Rankin, Hill & Clark. “You may not file an application ’cause you
don’t have the money.” And that leaves the door open for someone else to
file.
“Will it happen that often?” says Withrow. “I doubt it. Does it
happen that often now? I don’t think so. But it’s a possibility.”