Society | DOI: 10.1145/2209249.2209257
Marina Krakovsky
Patently inadequate
The biggest change to U.S. patent law in nearly 60 years
brings many changes, but fails to solve the software industry’s
most vexing problems.
WeLL Before PresidenT Obama signed the Lea- hy-Smith America In- vents Act (AIA) into law last September, the bill
was already being hailed as the biggest
overhaul to U.S. patent law since 1952.
Promising to spur innovation, shorten
application backlogs, and curtail legal
costs, the bipartisan bill easily passed
both houses of Congress. But despite
grand aims, lawmakers did not rebuild
the patent law from the ground up. Instead, they assembled a hodgepodge
of compromises, particularly between
the interests of large software companies, for whom patents have largely
been a net drain, and those of biotechnology firms, which favored strong
patent protection. To the bill’s mild-est critics, AIA did not go far enough
in meeting the needs of the software
industry. To bigger detractors, the
new law is even worse than the old
system—it is the legislative equivalent
of spaghetti code, a jumble of rules
whose meaning and implications will
take judges and intellectual property
(IP) lawyers years to untangle.
“This law is what the British call a
‘dog’s breakfast’—a little bit of everything,” says University of California–
Irvine law professor Dan Burk, who
testified during Congressional deliberations last March. Unfortunately,
Burk says, the lawmakers’ attempts
to reconcile competing aims led to
provisions that have not been tested
in other countries. “None of this new
stuff has ever been seen anywhere
on the planet Earth before,” he says.
“This is brand-new stuff that they
made up in the halls of Congress, so
nobody really knows what it means
or how a lot of it is going to turn out.
As a consequence, I’m guessing we
have 20 years of litigation ahead of us
before we know what the rules of the
game are.”
President obama signed the america invents act into law on september 16, 2011, at thomas
Jefferson high school for science and technology in alexandria, Va.
Although the full implications are
not known, most experts agree on
which handful of changes will have
the greatest impact on the software industry, for which the threat of patent-infringement claims has long been a
one of the biggest
and most positive
changes with the
america invents act
is the establishment
of prior-user
rights as a defense
against patent
infringement suits.
thorn in its side. Consider, for example, the Texas case earlier this year in
which World Wide Web inventor Sir
Tim Berners-Lee testified for the defense against a group of plaintiffs who
claimed that anyone using interactive
Web features was trampling on their intellectual property. Though interactive
features seem obvious to Internet programmers today and have been a mainstay of Web sites for years, the ease of
both patenting and suing made it easy
for holders of two older patents to try
wringing money out of anyone using interactive elements. (The plaintiffs lost.)
The overwhelming majority of patent
disputes never actually go to trial, but
even settling lawsuits is expensive. Under the old law, Burk says, “a patent
holder could sue, offer to settle for $1.5
million, and walk away with a nice pile
of cash without putting the patent significantly at risk. It was cheaper for the
defendant to pony up the $1.5 million.”
This problem will not go away under the new law, but some of the law’s
