So last month, without much fanfare in the rest of the world, the America Invents Act came into force in the US. For technology companies looking to protect their IP in the US this is a very important change and in the name of expanding my knowledge I recently attended a legal seminar discussing the new legislation to find out more.
And very interesting it was too. First of all, the headlines:
- Largely the act brings the US into line with the rest of the world – moving from a system based on “first to invent” to “first to file”. Basically no matter what proof or sketches in notebooks you care to provide to show that you invented something first, if you weren’t first to file your idea at the patent office in the US then tough luck.
- There are some significant changes at the US Patent Office to hasten and simplify the process of patents being contested. The Patent Office has hired a huge number of ex-DOJ staff to act as patent judges in order to accelerate the turnaround of decisions in contentious cases.
So what can we digest from these changes? Well, for those of us that aren’t lawyers anyway. There are a few things to mention:
- Actually, from a European point of view the news is a little bit “so what?” Most other countries have operated on a first to file basis for a long time, so in theory this makes dealing with the patent system in the US easier and more familiar. That said, of course the change throws up a whole bunch of new things that tech companies will have to get up to speed with pretty quickly. With the unitary patent system in the EU rumbling into view as well, suddenly it is all change on the patent front in Europe and the US
- One of the interesting insights from the seminar was that a lot of the changes, especially regarding the patent review process, have been motivated by a drive to reduce the burden on the courts. In particular there is a desire to avoid patent cases making it to jury trials (the feeling amongst the lawyers was that often juries are more interested in deciding how much the pay out should be rather than whether there is an infringement or not)
- Although it wasn’t said explicitly by anyone in the session there is a definite undertone that the DOJ has been frustrated by some high profile cases dragging on ad infinitum in the courts – yes Apple and Samsung I’m looking at you. Indeed if you caught any of the judge’s comments from the Apple v Samsung case (a particular highlight was the judge asking if Apple’s lawyers had been smoking crack) then you can probably understand the gist of why the DOJ has been encouraged to shake the system up a little
- One key question mark remains on how the changes will affect patent trolls (sorry “Non-Practicing Entities” – it seems lawyers view trolls very differently to inventors). It seems we will have to wait and see this play out, with some seeing advantages for trolls in the new system and others perceiving that it could favour genuine innovators. Whatever happens the process of filing and challenging patents will certainly be quicker and cheaper
In summary then expect to see less of the headline fines being handed out by juries (not just for Samsung, also see the recent Marvell case). And expect less of the seemingly endless he-said-she-said debates in court about who invented the latest widget or gesture first.
The response from the lawyers is cautiously optimistic about better processes and the hope that the patent system might just be better placed to do what it is meant to do – protect real innovation – leaving us free to actually talk about the technology again, not the latest court room drama.