Patent Reform Act of 2011: “America Invents Act”


The U.S. patent system has fostered incredible advances in technology and sustained innovation. Changes to that system are invariably controversial, as is the current Patent Reform Act of 2011, now titled the “America Invents Act.” This bill is the fourth successive congressional proposal to make substantive changes to the patent system, and passed in the Senate on March 8, 2011 by an overwhelming 95-5 vote. A corresponding bill with a few changes was introduced in the House of Representatives on March 30, 2011.

The Patent Office, c. 1855, National Portrait Gallery, Smithsonian Institution

Who’s On First? The first major change involves switching from the current system, called “first to invent” which awards a patent to the first inventor, to a system called “first to file” which grants a patent to the first inventor who files a patent application. To attain priority under the proposed law, an inventor will need to file their patent application first, before anyone else files or publicly discloses the subject matter. A one-year exception or “grace period” will apply to the inventor’s own publications, or publications derived from them, within a year prior to the application’s effective filing date. If an inventor is not the first to file their patent application, they may use a new “derivation proceeding” at the U.S. Patent & Trademark Office (USPTO) to argue the first application was derived from their original work.

No, I Was First: A second change allows a person accused of patent infringement to argue they used the invention first, though they didn’t apply for a patent and may not have told anyone. The Senate bill limits this “prior user” defense to business method patents, while the House bill allows it against all patents.

Is That Your Final Answer? The proposed law includes three mechanisms for challenging a patent: either before or after grant of the patent, and with or without the participation of the patentee. The “third-party requested post-grant review” is similar to the current reexamination procedure, challenging the validity of a patent within nine months after it is granted. The House bill changes this time frame to 12 months.

An “inter partes post-grant review” is a contest between the patentee and a challenger that may begin more than nine months after issuance, evaluating novelty and obviousness compared to prior publications. The more controversial measure is called a “pre-issuance third-party submission,” in which anyone can review a published patent application within six months after publication and send the USPTO a prior publication with a description of its relevance. Challengers may be prevented in later lawsuits from requesting re-examination of the patent, or objecting that the patent is invalid.

Read the Label: Products often indicate patent numbers, and lawyers have recently pursued lawsuits alleging that such “patent marking” includes expired or unrelated patents. The bills will end these suits, except if brought by the U.S. government or a competitor who can prove competitive injury.

Do Your Best: Patent applications under the proposed law are still required to describe the “best mode” to accomplish the invention. However, the bills would remove failure to do so from being used to invalidate an issued patent.

Company Patents: Many employers already prepare and file patent applications on behalf of their employees, who often have assigned (or are obligated to assign) inventions to the company. The proposed law makes the process of filing these applications easier.

Phone Home: Within a year, the proposed law mandates reports by the USPTO on the duration of the post-grant reviews, on prior user rights in selected industrialized countries, and by the Small Business Administration on the impact of the first-to-file system on small businesses.

And Many More: Under the bills, tax strategies will not be patentable business methods or inventions, though the House bill excepts tax preparation software. The proposed law would also order the USPTO to prioritize examination for “technologies important to American competitiveness,” such as “green technologies.” The House bill adds several provisions for automatic and discretionary pauses to patent infringement lawsuits. And the bills establish additional USPTO offices outside Washington, D.C.

Follow the Money: The USPTO is the only federal agency that makes a profit, because the fees they take in from inventors and patentees exceed their operating costs. However, for a long time Congress has had a habit of taking some of that money and distributing it to various pet projects. The proposed law would end this practice, creating a USPTO Public Enterprise Fund and giving the USPTO authority to set or adjust its fees to recover the estimated costs of its activities. Inscrutably, the House bill also grants the USPTO “fee setting authority” but continues to state specific fees.

An Elephant Named ‘Backlog’: Arguably the largest problem with the patent system for at least a decade has been the ever-growing backlog of patent applications waiting in the USPTO, a problem described by one official as “deficit examining.” The big question of the America Invents Act is whether it will aid, or impair, efforts to reduce this backlog.

Michael W. Montgomery is a registered patent attorney at the law firm of Christopher & Weisberg, P.A., an intellectual property boutique headquartered in Fort Lauderdale. His practice focuses on building and protecting intellectual property portfolios, litigation and client counseling in intellectual property and technology matters.

copyright Montgomery 2011


Crowd-sourcing Software Patent Evaluations

In talking with the guys at The Conversation, I mentioned the U.S. Patent & Trademark Office‘s project for crowd-sourcing evaluations of software patent applications, called Peer-to-Patent.

Dan and Dave expressed some interest in the peer-to-patent program:

“[Never heard of it], but it sounds awesome.”

–Dave Nanian


There is a guide on how it works, and here is their attempt at marketing copy:

“Peer-to-Patent opens the patent examination process to public participation for the first time. Become part of this historic program. Help the USPTO find the information relevant to assessing the claims of pending patent applications. Become a community reviewer and improve the quality of patents.”


The project is not currently running, and no “active patent applications” are being evaluated:

U.S. Peer-to-Patent in Evaluation:

“The U.S.Patent and Trademark Office and New York Law School are presently preparing an evaluation of the two-year Peer-to-Patent U.S. pilot. Results of that evaluation should be complete by the end of the year.

However, David Kappos (the current leader at the Patent & Trademark Office) was involved in designing it, and has recently (Friday) expressed interest in continuing it.


Also, there is a related grass-roots effort coordinated by the center for patent innovations at the New York Law School, called Post-issue. Rather than evaluating pending patent applications, Post-issue attempts to gather similar community input on certain issued patents:

“Post-Issue Peer to Patent, or simply Post-Issue, seeks to improve the quality of patents by providing a framework for ferreting out weak, non-meritorious patent claims in patents that have issued.

Harnessing the power of a community of peer reviewers created through Peer to Patent (www.peertopatent.org), Post-Issue elicits previously unidentified prior art that may invalidate or narrow the claims of issued patents. In so doing Post-Issue provides greater freedom to innovate, removes uncertainty from the patent system, and provides greater certainty as to the value of issued patents.

Whether for-profit or non-profit, whether for responding to demand letters or litigation or for improving a party’s own patents, all parties are invited to request posting of patents to Post-Issue for review.”


Calibrate your expectations, because participating in this kind of program takes a lot more effort than your average comment on a blog (and probably more than your average blog post!)

If the service is successful, it just might be worth the effort.


The Conversation on Patents: “Patent Schmatent”

Podcasts are an amazing concept — but there are thousands of them, and good ones can be hard to find. One guy who consistently records excellent work is “your internet pal,” Dan Benjamin.

I met Dan outside FOWA Miami. His first question was “What do you think of the iPad?” which led to an interesting conversation about the future of mobile computing, publishing, content creation contrasted with consumption, etc.

He later asked me “How much do you know about patent law and the stuff Apple is up to?”

“Dan Benjamin brings together geeks and attorneys to talk about the intersection of patents and software development, and speculate about Apple’s motivations and goals regarding their recent Android-inspired lawsuit against HTC.”

So I was a guest speaker on The Conversation, a podcast with 30-40 thousand listeners. The episode title is “Patent Schmatent,” and we talked about:

  • software patents and copyrights
  • technological innovation during the Middle Ages
  • “why have a patent system?”
  • Apple v. HTC
  • “what are they thinking?”

It seemed to go well, and I had a lot of fun talking with Dan, Dave and Wil. Hope to record more podcasts, one of these days.

Podcast: “Patent Schmatent


Primer on Copyright for Web Designers

h3. Introduction

This article discusses copyrights, particularly from the perspective of web designers.

h4. Some introductory notes:

* *The usual disclaimers apply:* This is not legal advice, and does not create an attorney-client relationship. Any legal situation is highly fact-dependent, etc.
* *No warranty:* I’ve tried my best to be accurate and clear, but give no warranty on any of this information. Use at your own risk, and your mileage my vary.

h4. Scope notes:

* *It’s an article, not a treatise.* Entire books have (and will continue to be) written on these topics and other related subjects, and this article is but an introduction to them.
* *United States only.* The scope of this article is limited to the U.S. Of course, copyright is an international topic, but I’m more confident talking about it as to the U.S.
* *Copyright only.* This article won’t discuss any other kinds of intellectual property, including patents, trademarks, trade secrets, etc.
* *Other topics:* Some topics outside the scope of this article include: whether to register your copyright(s), the intricacies of “Creative Commons”:http://creativecommons.org/ licensing, educational uses (remember class packets?), and how best to respond when someone copies your copyrighted material. Perhaps in a future article…

h4. In The Beginning:

Copyright law in the U.S. originates with the “Constitution”:http://www.archives.gov/national-archives-experience/charters/constitution.html. The image above shows Article I, Section 8 of the Constitution, which grants Congress the power:

bq. To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries “1”:http://www.archives.gov/national-archives-experience/charters/constitution_transcript.html

h3. You Created It; You Own It

The term “copyright” refers to a bundle of property rights granted by law to the creators of “original works”. The property rights arise immediately, when the original work is “fixed in a tangible form of expression”. In other words, the copyright is created when you save it on your hard drive, not when you post it.

So, when you originate that great story/article/song/play/blog post/movie script, and you write/design/draw/photograph/illustrate/record/compose it on your pad of paper/notebook/Moleskine/computer/PDA, a copyright is born.

h4. Questions, already:

* “I borrowed some inspiration from…” *Originality is required.* If you copy someone else’s original work, you have no copyright. Indeed, you’ve infringed their copyright, unless you fit within an exception. If you start with their work and make additions and changes, you’ve created a “derivative work.” (Derivative works may be discussed in a later article.)
* “But it wasn’t published yet” *Publication is _not_ required.* Since 1978, the copyright exists when an original work is fixed in a tangible medium, whether it’s published or not.
* “But there’s no (c) symbol” *A copyright notice is also not required.* (More on notices later in this article.)
* “But it’s not registered” *Copyright registration is also not required.* Though it can be beneficial, and is required eventually if you want to sue someone for copyright infringement. (Again, perhaps in a later article.)

h4. Exceptions, already:

* *Agreements:* An agreement by the creator of the work to sell/license/transfer rights in that work, changes things. (Surprising, I know.) Some examples include employment agreements, consulting contracts and “work for hire” agreements.
* *Owning a Copy:* If you buy a book, or CD, or DVD, you own that copy. But you do not own the copyright to the text, music or video. A simple example is that you can sell your copy of a book, but you can’t reproduce and sell copies of the book.
* *Non-Commercial Use:* There is no exception for non-commercial copyright infringement. It’s up to the copyright owner to decide whether they want your “free advertising.” However, this can be considered as one of the factors of an exception called “fair use”…
* *Fair Use:* There _is_ an exception for short quotes to enable commentary, criticism or parody. However, this is fairly complicated, and highly dependent on the specific fact situation. (More on fair use later.)

h3. What Are My Rights?

The owner of a copyright in an original work has the exclusive right to:

* *Publish* it.
* *Reproduce* it.
* *Distribute* it.
* *Display* it.
* *Make “derivative works.”*
* *Perform* it (in the case of music, plays, movies, etc.)

h3. Are There Limits On My Rights?

One of the exceptions to copyright is called “fair use,” under which some of a copyrighted work may be quoted or reproduced for the purpose of commentary, criticism, journalism, education, research, or parody.

*Caution:* Fair use is complex. The boundaries are very fuzzy, and clear rules are hard to find.

Some factors to be considered in evaluating whether fair use applies:

# the purpose and character of the use, including commercial or nonprofit educational purposes;
# the nature of the copyrighted work;
# amount and relative significance of the portion, compared to the entire copyrighted work; and
# the resulting effect on the market for or value of the copyrighted work. “2”:http://www.copyright.gov/fls/fl102.html

*Caution (Again):* From the Copyright Office circular entitled “Fair Use”:http://www.copyright.gov/fls/fl102.html (of course):

bq. The distinction between “fair use” and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission. Acknowledging the source of the copyrighted material does not substitute for obtaining permission.

*Summary:* Evaluating fair use is tricky. When in doubt, try asking the copyright owner for permission.

h3. What Is Not Copyrightable?

Some kinds of materials or otherwise “original works” cannot be copyrighted. The following quotes are examples from the Copyright Office circular entitled “Copyright Basics”:http://www.copyright.gov/circs/circ01.pdf, in the section entitled “What Is Not Protected By Copyright?”:

bq. Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents

*For example:* you don’t own “white on dark” text, or a “green and black” color scheme, or the slogan “Web Standards Rule” or “Web Wizards,” or similar short phrases and general ideas.

*Exception:* Remember that we are *not* talking about trademarks here. Maybe in a later article.

bq. Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration

*Summary:* Copyright is all about the _expression_ of an idea, not the idea itself. A specific “wicked worn” website design may be copyrighted, but you can’t copyright the _idea_ of “scuffing up your graphics.”

bq. Works consisting _entirely_ of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources)

*Summary:* Remember that term “original works” from up at the top of this article? It has to be original to be copyrightable.

At the risk of talking from both sides of my mouth, the standard for “originality” is relatively low. For example, you might think that the latest in a grand tradition of a hundred thousand romance novels is not sufficiently original to merit copyright protection, but as long as the author didn’t plagiarize or copy….

h3. After You Post It, You Still Own It

When you post your own copyrighted material on the internet, you still have the copyright. You haven’t given it away, and it doesn’t become public domain, and it’s _not_ okay for someone to copy it. Remember the discussion about owning a book, but not its copyright.

Just in case there’s any doubt though, you _have_ published it.

h3. Copyright Notices

A copyright notice is the cryptic little phrase at the bottom of many websites, inside the cover of every book, etc. It is basically a statement that “I own this original work.”

The correct form includes three items:

# The word “copyright” or “copr.”, or the (c) symbol.
# The year of first publication of the copyrighted material to which the notice refers.
# The name of the copyright owner. This may be an individual’s full name or last name only, or a company or organization name (or a recognizable abbreviation).

This third one causes some confusion for websites (and software programs, like Windows for example), which contain various chunks of material that were posted/published in different years. The usual solution is the “year1-year2” nomenclature.

By the way, it is generally considered acceptable to change the order of these three items of a copyright notice, although it looks funny if the copyright word/symbol isn’t in the front.

h4. Some examples:

* copyright 2006 John Doe
* (c) 2006 Doe
* (c) Doe & Co. 2005-2006
* copr. 2005 Doe Community Church

h4. Notes on Notices:

You may see a notice that includes the phrase “all rights reserved.” This is an artifact from a time when a few countries actually concluded that a copyright notice did _not_ necessarily indicate an intention to reserve all rights, only some of them. My understanding is that this phrase is no longer necessary at all.

By the way, you may also see the characters “( C )”. This is simply incorrect. These three characters have never been given legal effect.

h4. Copyright Notice No Longer Necessary

The copyright notice is now optional, at least in all countries that have ratified the Berne Convention. However, it can be beneficial.

h3. Lifetime Of A Copyright:

That word “lifetime” is a little joke, because the copyright in current works lasts for the lifetime of the creator, plus _70 years._ *Short answer:* long enough.

h3. Don’t Infringe Copyrights

At the very least, it’s illegal. As a Christian, it’s also a poor witness. Consider “Thou shall not steal.”

h3. Rules of Thumb on the Internet:

These are only rough guidelines, but they’re good ones:
* If it’s on the internet, it’s copyrighted.
* If you didn’t originate it, you don’t own the copyright.
* When in doubt, ask for permission.
* Or be certain as to fair use (and cite the original author).
* Or look for works available under a creative commons license.
* Don’t infringe copyrights.

h3. Additional Resources:

h4. “United States Copyright Office”:http://www.copyright.gov/

# “Copyright Basics”:http://www.copyright.gov/circs/circ01.pdf
# “Summary of Fair Use”:http://www.copyright.gov/fls/fl102.html
# “Information Circular 3 – Copyright Notice”:http://www.copyright.gov/circs/circ03.html

h4. Summaries:

# “Wikipedia”:http://en.wikipedia.org/wiki/Copyright also has some copyright information.

h4. University Resources:

# “Stanford University’s Copyright & Fair Use Overview”:http://fairuse.stanford.edu/Copyright_and_Fair_Use_Overview/
# “Cornell’s Legal Information Institute – Copyright”:http://www.law.cornell.edu/wex/index.php/Copyright
# “Purdue University Copyright Office – Copyright Basics”:http://www.lib.purdue.edu/uco/basics/
# ” Purdue University Copyright Office – Copyright Exemptions”:http://www.lib.purdue.edu/uco/exemptions/ (at least the first “Fair Use” section)

h4. Multimedia and Internet:

# “An Intellectual Property Law Primer for Multimedia and Web Developers”:http://www.eff.org/Censorship/Academic_edu/CAF/law/multimedia-handbook
at “Electronic Frontier Foundation”:http://www.eff.org/. A formatted version is posted at: “An Intellectual Property Law Primer for Multimedia and Web Developers”:http://www.nationaltechcenter.org/legal/webcopyright.asp
# “10 Big Myths About Copyright Explained”:http://www.templetons.com/brad/copymyths.html (by Brad Templeton, Chairman of the Board for the “Electronic Frontier Foundation”:http://www.eff.org/)
# “A brief intro to copyright”:http://www.templetons.com/brad/copyright.html
# “Getting Permission to Publish: Ten Tips for Webmasters”:http://www.nolo.com/article.cfm/catId/D067F3DC-202E-4EF7-AAEEEFB60061533D/objectId/8CD796F2-9770-4ECA-B8F2B4F66DB170F1/310/266/ART/
(talk about a messy URL!) Good article for web publishers.

h4. From Nolo Press:

# “Nolo Press Copyright page”:http://www.nolo.com/resource.cfm/catID/DAE53B68-7BF5-455A-BC9F3D9C9C1F7513/310/276/ (Lots of good information, at about the correct level of sophistication.)
# “When Copying Is Okay: The ‘Fair Use’ Rule”:http://www.nolo.com/article.cfm/catId/DAE53B68-7BF5-455A-BC9F3D9C9C1F7513/objectId/C3E49F67-1AA3-4293-9312FE5C119B5806/310/276/ART/

_This article is (c) Montgomery 2006. Some rights released with a_ Creative Commons Attribution-NonCommercial-ShareAlike 2.5 License.

_Also published at_ “Godbit”:http://godbit.com/article/copyright.

_Photo excerpt of the U.S. Constitution, Article I, Section 8, from the_ “National Archives”:http://www.archives.gov/national-archives-experience/charters/constitution.html.