Securing Your Innovation Liberty

  

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By: Jim Belfiore, Certified Innovation Master & Senior Director, Client Innovation and Practices

As we enter the days of summer, and the first half of the year comes to an end, we take pause to reflect on familiar milestones.  With another quarter coming to a close, manufacturers reflect on their mid-year performance, and often tune their innovation strategies with an eye towards improvement.  Before that (at least in the United States), we’ll all enjoy the July 4^th holiday weekend to celebrate Independence Day.  Remembrances of the American Revolution will dot the amber grain and purple mountains with parades, sparklers and fireworks, steeped in the carbon footprint of countless barbeques.

Meanwhile, unseen by many is different kind of smoke on the horizon.  Quietly burning is a fire that could have profound impacts on your innovation and intellectual property strategies for years to come.  Earlier this month, the most comprehensive patent reform bill in over 60 years was passed in the United States House of Representatives, and is now off to the Senate (which already passed its own version of the bill) for conference resolution.  The Leahy-Smith “America Invents Act” contains many significant changes to U.S. patent law, just a few of which include:

• Replacing the “first-to-invent” paradigm with a “first-to-file” rule in an attempt to align U.S. patent processes with the international community.
• Adding a “commercial use” infringement defense which would allow an accused infringer to prove that it had used the claimed art in a commercial application, more than one year prior to a patent’s filing.
• Creation of a new post-grant review process allowing challenges to issued patents for a set period of time.
• Changing the inter partes re-examination process – the triggering of which could originate from anyone who is not the patent owner, including an alleged infringer.
• Banning the granting of patents on a “claim directed to or encompassing a human organism”.

These and many other changes to current patent law proposed in the America Invents Act will require time to fully understand and implement, both at the prosecutorial and examiner levels.  There also had (until recently) been a provision of the bill that would have restored funding to the USPTO.  Since 1992, more than $1 billion in collected patent fees have been siphoned off to the general fund, replaced with government IOUs.  The America Invents Act had sought to eliminate “fee diversion” to enable the USPTO to add desperately needed resources, but that provision appears to have been eliminated unless it is restored in conference committee.

What does all this mean to American innovation, and to those who would compete in American markets?  This bill is certainly not without controversy, and there are many arguments both for and against the proposed changes, should they become law later this summer.  Most of the changes would take place one year after the bill is eventually signed.  Despite the debate and democratic process, it is a safe bet that there is large potential for litigation on the horizon.  (I certainly am seeing the litigation question being discussed in numerous patent blogs.)

What is clear is that never has there been a more important time to assess the value of your current intellectual property, and to think about not only your current IP strategy, but how that strategy might need to change in the coming months and especially in the next few years:

•  How will the change from first-to-invent to first-to-file affect your innovation? 
• How many new ideas will you need to evaluate to maintain your competitive edge in the marketplace? 
• How will your infringement analysis and response strategy change (both on your own IP and on IP that blocks your innovation)?

The changes proposed by the America Invents Act will certainly make it more critical for innovators to stay on top of their industry through regular research and more frequent review of product portfolios, functional trends, and new patent applications.  Invention Machine Goldfire provides in-depth tools and tasks for assessing IP landscapes.  It provides a platform in which critical questions related to any research topic, including those of IP management, can be automated to provide regular updates and alerts to new issues and opportunities.

The America Invents Act will likely bring new challenges and opportunities to any product manufacturer’s battle for securing the freedom to practice innovation.  

Perhaps these events serve as a very timely reminder in light of the Independence Day holiday.  As the militias and Continental Army of the American Revolution knew all too well:  Liberty should never be taken for granted.