NCPA - National Center for Policy Analysis

Patent Reform in the United States: Lessons Learned

January 10, 2013

In 2011, President Obama signed the America Invents Act (AIA), which would modernize U.S. patent laws to be more competitive with the rest of the world. In the past it has been very difficult to make laws that accommodate different industries and technologies, says Dan L. Burk, Chancellor's Professor of Law at the University of California, Irvine, School of Law.

  • The legislation will amend current patent law with provisions that take effect over an 18 month period.
  • The purpose of the law is to modernize the U.S. patent system to put it in the same playing field as our trading partners.
  • Furthermore, it has been touted as a way to create 200,000 new jobs.

This reform is advertised as a way to streamline the patent process and make it more efficient. The AIA seeks to give a role to legislatures, courts and administrative agencies that are best suited to handle different areas of patent law. For example, since gene patents are very complex, the legislature has remained silent on the issue and is allowing the courts to interpret the law as the facts unfold.

However, there are also many drawbacks to the AIA. First, it did little to correct or update the lengthy "first to invent" system or the one-year grace period between disclosure and application. Under the AIA, the statute provides that the first inventor that files the claim is entitled to the patent without respect to what mechanism would be used to determine whether an applicant is the inventor.

Second, it still allows a one-year grace period in which an inventor can disclose an invention and have a year to obtain a patent. This puts the United States out of step with how the rest of the world does it.

Moreover, the AIA was subject to intense lobbying in which lawmakers granted certain lobbyists special provisions that don't make sense in the context of patent law. For example, American universities have reduced fees for patent applications and processing. Furthermore, it embeds vague language that would require administrative and judicial interpretation before it is fully understood.

Finally, the AIA has several inconsistencies and many longstanding provisions were left intact. Combined with vague and undefined language, inventors may be discouraged from filing applications due to the mixed signals of the law.

Source: Dan L. Burk, "Patent Reform in the United States: Lessons Learned," Regulation, Winter 2012-2013.


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