The United States Senate passed the America Invents Act by a vote of 89-9 on September 8, 2011, which means that the much anticipated, discussed, reviled and acclaimed legislation (depending on your viewpoint) will become law very soon. According to Article I, Section 7 of the U.S. Constitution, the President has 10 days to sign the legislation or it would become law without his signature.
Article I, Section 7, in relevant part reads:
If any Bill shall not be returned by the President within ten Days (Sundays excepted) after it shall have been presented to him, the Same shall be a Law, in like Manner as if he had signed it, unless the Congress by their Adjournment prevent its Return, in which Case it shall not be a Law.
Thus, the question about when the America Invents Act will become the law of the land depends specifically on when it will be “presented to” President Obama. As of the writing of this articler there is nothing on the White House web page of pending legislation likely to be signed in the coming days. Since the Administration has been so vocally supportive of the bill an Obama signature seems virtually guaranteed in the coming days, and then the fun starts.
The majority of provisions in the America Invents Act will not come on line immediately. Most of the provisions will either become effective 1 year after the bill is signed or 18 months after the bill is signed into law by President Obama. Notwithstanding, the fee setting authority and the new fees for patent services will go into effect immediately, so those paying fees or filing new applications will see an increase in the very near future.
The provisions relating to the change from first to invent to first to file will come on line 18months after President Obama signs the America Invents Act into law, giving the United States Patent and Trademark Office time to come to terms with the new law. You can expect that the USPTO will be extraordinarily busy writing rules, proposing rules and enacting rules over the next 12 to 18 months. Simply stated, the America Invents Act is just the beginning.
The implementation of the changes to the law and how that will affect the patent process within the USPTO is not contained in this legislation. That is not at all uncommon. The implementing agency has authority to implement rules consistent with the legislation and the law to carry out the mandates and requirements of the legislation. The magnitude of the change to U.S. patent laws cannot be certain until we see all the rules implemented, but it is safe to say that in 18 months little of what we know about patent practice, patent law and procedure will be completely re-written, particularly given that the USPTO already has new rules underway relative to reexamination proceedings and Appeals, neither of which were implicated by the America Invents Act. Yes, in 18 months patent practice, patent law and patent procedure will be completely different.
Over the coming days, weeks and months the new law will be analyzed, commented upon, criticized and virtually everyone will have an opinion on what is says and what it means. The truth, however, is we won’t really know much about what the new law means for about 5 years or so. There is much in the new law that seems straight forward on its face, but will still require courts — both the United States Court of Appeals and the United States Supreme Court, to weigh in on.
More problematic, however, are those sections of the America Invents Act that are clear on their face but which were likely not intended as written. Compounding this is the fact that the Legislative History will in some cases completely contradict the language of the new law itself. An example of the Legislative History contradicting the law itself would be 102(b)(1).
In the Legislative History Senator Kyl (R-AZ) says: “Under new section 102(b)(1)(B), once the U.S. inventor discloses his invention, no subsequent prior art can defeat the invention. The U.S. inventor does not need to prove that the third party disclosures following his own disclosures are derived from him.”
But 102(b)(1)(B) says: “A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if… the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
Said in the opposite manner, 102(b)(1)(B) translates to: “A disclosure made 1 year or less before the effective filing date of a claimed invention IS prior art to the claimed invention under subsection (a)(1) unless the subject matter dislcosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
I just don’t see any way that what Senator Kyl says can be interpreted as being consistent with the language in the bill. In fact, subsequently disclosed prior art seems to specifically be envisioned in the plain meaning of the law to defeat an invention unless it was obtained prior to the inventor’s publication from the inventor. So if the inventor publishes and party A were working on something independently they could publish immediately and defeat the inventor’s ability to obtain a patent unless party A obtained the information from the inventor prior to the inventor’s publication. How likely is this? Possible certainly and quite likely in areas where many inventors and inventive teams are working to solve the same or similar major problems.
I don’t have any doubt that this is what Senator Kyl says in the Legislative History was what was intended, but that is not what the bill says. The bill says that an inventor cannot have his or her own publication used against them, and neither can they have a publication used against them if the subject matter of the publication was derived from the inventor prior to the inventor’s publication. The way I read 102(b)(1)(B) is exactly opposite of what Senator Kyl says it means. I think a compelling argument can be made that the plain meaning of 102(b)(1)(B) means that an inventor does need to prove that a subsequent publication after the inventors own publication came from information from the inventor prior to the inventor’s publication.
I suspect if we look section by section there will be many of these instances where what we were told was in the bill is actually not accurate. I for one was alarmed by the lack of familiarity with patent law and the gross mischaracterizations of what the bill actually provides for by Members of Congress.
Why is this important? The law is extraordinarily clear when it comes to the use of Legislative History. Legislative History can only be consulted when the terms of a law are ambiguous. If the terms of the law are clear based on the plain meaning of the words used then courts are not supposed to turn to the Legislative History. You turn to Legislative History only to clear up ambiguities. This rule makes all the sense in the world when you realize that Legislative History includes statements by Members of Congress who may or may not actually be saying things that are accurate, or may be making grandiose statements about what the entire Congress intended. Even under the best of circumstances Legislative History is uncertain and easily manipulated, which is why when the law is clear it is off limits.
Another section where the Legislative History will not match the actual language of the bill is relative to whether the PTO will receive 100% of the user fees. In his statement against the Coburn Amendment and in favor of tabling that amendment, Senator Leahy blatantly misrepresents what the America Invents Act means for USPTO funding. Having watched the patent reform legislation unfold now over 6 years I can’t say this is new tactic for Leahy, or for many others. S
Senators have a way of saying whatever it takes to win an argument or persuade colleagues (and the public). The truth of the matter asserted is of a distant consequence. For example, Leahy says the USPTO get to keep 100% of user fees, which is in the Legislative History now. The terms of the bill, however, say the USPTO keeping 100% of user fees is subject to approval by Congressional Appropriations. What does that mean? It means that the USPTO will keep 100% of user fees paid if Congress says it can, but if an Appropriations bill conflicts the Appropriations bill will trump. That is exactly what we have now and exactly what has lead to nearly $900 million of user fees being pilfered from the USPTO by Congress since 1992.
So the point is that there is the language of the bill, and then there is what we were told was in the bill, which actually isn’t what is in the bill if you are reading the plain meaning. In the coming days President Obama will sign the bill and then the Courts will embark on the long journey to decipher the text and tell us what it means. All the while the USPTO will be proposing and then enacting new rules. Patent law, practice and procedure is in a state of flux to say the least.