Most Silicon Valley companies were opposed to the patent reform law that President Obama signed last week. Some argue that the America Invents Act favors large megacorps over smaller companies, and could dampen innovation in the tech sector.
So we were wondering: Does this mean that Obama has prevented Skynet from developing and triggering Judgment Day? We asked a bunch of patent attorneys and experts, and here's what they told us.
If President Obama has indeed prevented the rise of Skynet by dampening innovation in the software and computer engineering fields, then he's a great hero. On the other hand, this could also mean a delay in reaching the Singularity, in which we develop artificial intelligence and everybody lives forever. But what's the real truth about the America Invents Act, which some are calling the most significant change to patent law since the 1800s? Is it really going to change the dynamics of innovation in computing and related fields?
"If I were a hypothetical future A.I., I wouldn't be worried," says Mark A. Lemley, a partner at Durie Tangri who's also the William H. Neukom Professor at Stanford Law School and director of the Stanford Program in Law, Science, and Technology. "The new patent act makes a bunch of changes to the patent law that will be a big deal to patent lawyers, but it doesn't change the fundamental economics of the patent system."
But Carlos Fisher, patent and trademark attorney with Stout, Uxa Buyan & Mullins in Irvine, CA, disagrees, saying:
As to A.I. and biotech, and "Borg-like" innovations, to the extent that these experiments are being done by smaller inventors/entities, it will slow progress in these technologies. However, I would expect that there are Xerox PARC-like groups within the larger well funded tech companies (and perhaps some tech-funded start-ups in the Bay Area and elsewhere) in which this kind of research is being done, and who will have the resources to continue the work. Thus, I would expect that there will be a narrowing of the playing field in this and many other fields as a result of the Act.
Technological Singularity? If such a thing is indeed possible, yes, I think the AIA reduces the probability of it being accomplished earlier rather than later.
So which is it? Has Skynet been dealt a devastating setback, or is this just a minor bump on the road to robotic domination? To answer that question, it's necessary to look at a few of the things the ridiculously complex America Invents Act actually does to change patent law:
First to File This is the change that's gotten the most attention, but it's not actually as much of a big deal, according to the patent attorneys we talked to. This change brings the United States in line with most other countries, including Canada — it basically says that the first person to file the patent, rather than the first to invent something, gets to own the patent. (Legend has it that Alexander Graham Bell was the first to patent the telephone rather than the first to invent, but patent attorneys we spoke to believe this is just a myth, since under the old rules Bell would have lost out.)
We spoke to John M. Conley, the William Rand Kenan, Jr. Professor of Law at the University of North Carolina, and here's he explained the "first to file" thing:
The rules for proving who's first to invent are some of the most complicated rules in law generally. You'd have to be crazy to sit back and think, 'Well, I can always win a priority contest.' That just wouldn't be a rational operating assumption. You might be able to say in certain situations, 'I can knock out my competitor,' but being able to knock out your competitor doesn't mean you could get a patent yourself. [But in the process] things are probably going to happen that will prevent you from getting your own patent.
So the move towards "first to file" does benefit whoever's fastest about getting to the patent office — which could give an advantage to larger companies that can afford to employ an army of attorneys to get a patent drafted faster. But it also makes patent disputes less messy and confusing, at least in theory. And smaller operators can still file a provision application or publish some prior art, and that gives them 12 months to file a patent.
Post-Patent Challenges The new law includes not one, but three new avenues for challenging a newly filed patent, attorney Dennis Fernandez with Fernandez & Associates in Menlo Park, CA tells io9. "There were already available various reexamination and reissue procedures that were reasonably available for that purpose." These new challenge procedures aren't terribly useful for small inventors — for example, one of them only has a nine-month window to challenge a patent, so you have to be watching the patent office like a hawk.
Says Julie Samuels, a staff attorney with the Electronic Frontier Foundation, "The additional procedures, such as the new post-grant review window, sound good in theory, but really they are going to be really difficult to comply with (a nine-month window is not nearly long enough for people not already 'lawyered up')."
And Fernandez fears that these new procedures will make it easier than ever for the big corporations to knock out patents from small inventors, so they can "continue building products/services that may or may not infringe certain patents, but [they] certainly don't wish to be bothered with licensing fees or litigation costs."
The Prior Use Defense If you can prove that you were using some methods within a company for "internal commercial use," then you're immune from any patents that are filed more than a year later. By all accounts, this will benefit larger corporations that can document that they've been making use of a method without actually patenting it.
No Multiple Plaintiffs According to Fernandez, there's a "joinder" rule change in the new law that "prevents patent owners from suing multiple infringing parties in the same action." This change "is especially onerous to individual inventors, who already had substantial hurdles in affording to litigate previously, but will now be prohibitively blocked from enforcing their patent rights against multiple infringers."
Patent Trolls. The new law does almost nothing to fight the "patent troll" problem, according to the attorneys we talked to. The good news is, companies are no longer able to patent incremental improvements in technology or processes as easily as they used to, thanks to a 2007 Supreme Court ruling in KSR International Vs. Teleflex, which basically put the kibosh on patents that are too "obvious." (Also, Conley says that people used to think "business method patents" would "end Western Civilization as we know it," but "courts usually refuse to enforce them on the grounds of obviousness."
Bottom line: Even with the "first to file" rule, you still can't patent something unless you can prove you invented it, says Conley. "If you have this invention, and I beat you to the patent office, the only way i can get a patent is if i have the invention too." And if you have a revolutionary invention, and it turns out that someone else is claiming a small part of that invention, "that doesn't mean you're out of the game on patenting."
Or here's another way of looking at it, returning to the question of Skynet. We were wondering how Cyberdyne Industries would go about patenting the technology that they got from the first Terminator who traveled back in time. How could Cyberdyne "prove" they invented this technology? We asked Stanford's Lemley, and here's what he says:
I have a comic on my office door that is a courtroom scene in which a lawyer says "I intend to prove that my client invented a time machine, then went back to 1989, where this man stole the idea and patented it first!" In the real world, while there would be no prior art in such a case, both the old and the new patent laws prevent awarding a patent to someone who was not the true inventor, but who derived it from someone else.
Patents prevent not only copying but also independent development. Indeed, more than 90% of patent lawsuits aren't filed against people alleged to have copied, but against independent developers. That fact, coupled with long lead times in the PTO, a fairly lax standard for allowing patents, and the notoriously fuzzy definition of inventions, means that it is all too easy to get sued for doing something you developed yourself by someone who arguably didn't invent it at all.
All in all, there are good reasons why tech companies like Apple and Google, plus many smaller IT companies, opposed the new law, while Microsoft and some larger, more established companies supported it. Says Fernandez,
I've spoken recently w several Silicon Valley patent practitioners, and none of them like the new patent law, unanimously because it not only favors large corporate interests (in protecting their ongoing business activities) but perhaps more importantly does nothing to help the 'little guy' - which was the original motivation to have patents to begin with (see US Constitution, Article 1, Section 8) .. anyway if you're familiar with Atlas Shrugged, well, then this new patent law unfortunately only reflects a real-life manifestation of Ayn Rand's worst nightmare.
What should smaller inventors and creators do? Some experts advise getting to the patent office as quickly as possible, or protecting your invention with a public disclosure that gives you the 12-month window to patent. But Fisher advises the opposite:
A smaller inventor/company can choose to initially opt out of patenting and work in secret (i.e., initially keeping the results as a trade secret), to pitch one's results under confidentiality to prospective partners/venture capitalists who can afford to patent, and to thus turn "small" research into well-funded "big", patent-ready research. Under the AIA, there is no longer a legal penalty for delaying filing a patent application ("abandonment" of an invention under the old law), except, of course, the fact that someone else may file a patent application or publicly disclose the invention first.
The above would therefore be my advice to such a small entity: in 18 months, when most of the substantive provisions become effective, liberally use confidentiality agreements, don't publish or pitch publically, seek a partner when you believe you can strike a good licensing/partnership/funding deal, then think about filing a patent application. But definitely file as soon as you can afford it. Note that this proposed tactic may well lead to less net public dissemination of technological data, and thus slower overall innovation.