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“Innovation Act” Passes U.S. House

A “patent troll” destroying innovation. From the Office of US Representative Bob Goodlatte. Mr. Goodlatte is Chairman of the House Judiciary Committee, and principal sponsor of the "Innovation Act."

The speed with which the US Congress has attempted to address the problem of “patent trolls” belies both the complexity of the problem and the benefit of legislative action.

By Jonathan T. Kaplan, Esq.                                  January 2014

It’s been just a little over two years since Congress passed the most significant changes to U.S. patent law in about 170 years – the “America Invents Act” (or AIA), that became law Sep. 16, 2011.  It’s been just 10 months since the most significant part of the AIA became effective, on Mar. 16, 2013.

In case you don’t know it already, Mar. 16, 2013 is the date on which the U.S. patent system switched from a “First To Invent” (or FTI) system to a “First Inventor To File” (or FITF) system.  Most significant about this change, from FTI to FITF, is the weakening of the “grace period.”  Until Mar. 16 of last year, under the pre-AIA law, an inventor (who conceives the invention first and acts diligently) was pretty much guaranteed (at least) one year to get a patent application on file, from the date the inventor conceived of the invention.  Now, under the AIA, achieving a one year grace period is still possible in theory, but prudent inventors will act as if there is no grace period at all (at least until the U.S. Supreme Court has had a chance to interpret the new law; an event almost certainly at least a decade away).

Yet the government is at it again, with the U.S. House of Representatives passing something called the “Innovation Act,” that is supposed to address the problem of “patent trolls.”  The Innovation Act, more formally known as H.R. 3309, passed the House on Dec. 5 with an amazingly bipartisan vote – 325 for, 91 against, and 15 abstaining.  Right away, the Senate took up the issue, holding its first post-House-vote hearing on Dec. 17, called “Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse.”

With all the legislative activity, one would think the issues being addressed are clear cut, and the equities in favor of legislative action quite strong.

Analyze the actual text of H.R. 3309, however, and look at the most authoritative government report on the issue (the Aug. 2013 report of the Government Accountability Office; a report mandated by law in the AIA), and the issues are not so clear, nor are the equities, in favor of legislative action, quite so strong.

In following posts, we will do just that: analyze the actual text of H.R. 3309, and look at what the GAO (as well as other authoritative sources) has to say on the issues.

Mr. Kaplan runs a small IP law firm, specializing in patents, located in the northern suburb of Portland, OR.  He has over 20 years of experience (the first 10 with large nationally-prominent law firms), is admitted to practice law in three states (CA, NY, and WA), and is USPTO registered.

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