The new patent law put into place by the America Invents Act on September 16, 2011, goes into effect Spring 2013. This marks a fundamental change in US patent protection, moving away from the current first-to-invent rule to the international standard, first-to-file.
“Effectively, this creates a race to the patent office,” according to Patrick Richards of Richards Patent Law PC. “In a race of established, well-funded businesses with defined intellectual property protection strategies (and patent attorneys in-house or working closely with the business) versus entrepreneurs that may not have any experience with the patent system and the funds to pursue robust patent strategies, the advantage clearly goes to the businesses,” Richards said.
Although some aspects of the change are positive, including a reduced fee structure, the entrepreneur, who above all wants to “gain more certainty about their business plan at an early stage,” is likely to find the changes a net negative, Richards said.
“There are a lot of people that think (first-to-file) might favor large businesses, but no one knows how it’s going to affect” the business climate, according to Chas Rampenthal, general counsel at online legal services provider LegalZoom.com.
A solo entrepreneur who follows the rules carefully in acquiring a patent “has a pretty good leg up,” Rampenthal said, noting the law change actually reduces patent fees and possibly quickens the process.
Although companies with more resources can certainly win the race to getting in line, it “doesn’t get them a leg up on doing the inventing themselves.” He said the solo entrepreneur with a great idea remains ahead of the patent game.
What will be the impact on new business creation?
Anna Prata, an interim and turnaround executive who has worked with both Fortune 500 corporations and startups, sees trouble for entrepreneurs and investors alike. Prata says “this shift favors big companies with broad reach, resources and capabilities. They can quickly file while startups without cash on hand will not be able to protect their idea.” Prata thinks that thus far most early stage entrepreneurs didn’t need to make filing a top priority, especially not prior to fundraising, knowing they invented something and could prove it. But with the new law that’s no longer the case. “Why keep innovating if you do not have the resources to file first and claim ownership? It could really inhibit new company creation,” she said.
Prata thinks the impact of the new patent law on venture funding could also be pronounced: “VCs invest on the future promise of technology that will be patented at some point, knowing that if the start up failed they could retain the patented technology as an asset.” If that promise is threatened, she sees less investment dollars on ideas alone.
The End of Entrepreneurs?
Prata is also concerned about the potential effect on the American dream. Historically an entrepreneur could create and a large corporation would buy the entrepreneur’s company – it was cheaper to buy the little guy’s patent than attempt to re-invent it themselves. But what if corporations became a threat to entrepreneurs instead of their salvation as a rich class of buyers? Why would a corporation buy the entrepreneur’s company if it could come up with a variation on the theme and quickly file its own patent?
Veteran Entrepreneurs Say Bring it On
Veteran entrepreneur Chris Gladwin, founder and CEO of Cleversafe, knows a thing or two about patents, having authored 300+ issued and pending patents relating to dispersed storage technology. His take is that the patent reform act is a good idea. “In addition to aligning with international patent offices that are all on a first-to-file system, it is materially easier to operate. First-to-invent is just too hard to measure. It is practically impossible to know if a prior invention is lurking that hasn’t yet been filed; as a result, a first-to-invent system inhibits investment in new technology areas.” Chris thinks that first-to-file and the new Act will better enable new technology businesses and new technology jobs.
Neil Kane, founder of Advanced Diamond Technologies and now CEO of GlucoSentient, agrees with Gladwin: “I think it’s a net positive. There is a huge misconception about first-to-file. People incorrectly assume that if you give a presentation about an invention or idea, someone in the audience can run to the USPTO with your idea and patent it before you do.” Kane says that’s not the case, that in fact your public disclosure becomes what is known as “prior art” and would invalidate a patent filing.
Sure There’s the Law, But What About Patent Trolls?
Venture capitalist Matt McCall of New World Ventures in Chicago is among those who think the new patent law is a net plus. “Patents are not core in our process. Patents don’t keep players out but can help from being sued.” McCall hopes the new law hinders patent aggregators, often called “patent trolls”, who sue firms they claim infringe on their patents. “We’ve had too many companies victimized by trolls who have no intent to commercialize, just tax tech firms.”
Nancy Hill, president of the American Association of Advertising Agencies, says the new law “doesn’t solve the problem in our industry.” Ad agencies are a prime example of the creation of new intellectual property, building web-based products and services on top of open source code for clients and believing they are free and clear of patent claims. Hill says agencies believe they are building products “in the public domain” but continue to face legal challenges from patent trolls, making for an impossible situation that won’t be improved by the new law taking effect.
Entrepreneurs, what do you think – is the new patent law and first-to-file going to be a blessing or curse for you?
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