New Tillis-Leahy Bills to Boost Innovation: The Good, the Bad and the Nonsense, Invent Together

September 21, 2021

By Gene Quinn

“The Unleashing American Innovators Act is a worthwhile idea and provides provisions that would help small businesses and independent inventors. The Pride in Patent Ownership Act is more one-sided nonsense.”

Earlier today, U.S. Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the Ranking Member and Chair of the Senate Intellectual Property Subcommittee, introduced a pair of bipartisan bills that the Senators say are aimed at improving the participation Americans from all backgrounds in the patent system and ensuring that the public knows the true owners of patents.

A Potential Boon for Small Inventors

If enacted, the Unleashing American Innovators Act (UAIA) would require the Director of the United States Patent and Trademark Office (USPTO) to establish another satellite office within three years somewhere in the Southeastern region of the nation, which the bill specifically defines as Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas. Of course, given that the main campus of the USPTO is located in Alexandria, Virginia, it would seem unlikely that Virginia would be the final destination of any Southeast Region satellite office. The UAIA would also require the Director to determine within two years whether any additional regional satellite offices are necessary to— in the words of the bill— “achieve the purposes described in section 24 23(b) of the Leahy-Smith America Invents Act… and increase participation in the patent system by women, people of color, veterans, individual inventors, or members of any other demographic, geographic, or economic group that the Director may determine to be underrepresented in patent filings.”

In addition to updating the patent pro bono program and establishing community outreach programs, the UAIA would establish a pilot program that would give first-time patent applicants a patentability assessment they could use to determine the viability of filing any patent application. How that would differ from a patent search and assessment from a patent practitioner would remain to be seen, although the terms of the bill, which mentions a possible referral to the patent pro bono program, seems to envision some kind of means testing. The UAIA would also allow the USPTO Director to reduce small entity fees to 75 cents on the dollar and micro-entity fees to 90 cents on the dollar compared to the full fare fees for large entities.

Invent Together, an initiative aimed at “understanding the gender, race, income, and other diversity gaps in invention and patenting and supporting public policy and private efforts to close them,” applauded the UAIA. “This legislation will help ensure that the United States remains at the forefront of global technology leadership by giving everyone a seat at the table and providing meaningful support to first-time and underrepresented inventors,” said the organization’s Executive Director, Holly Fechner, in a statement.

One-Sided Solution

Meanwhile, according to the Senators, the Pride in Patent Ownership Act (PPOA) would ensure that the public has access to information about the true owner of a patent. The press release sent out today along with the legislation explains, correctly so, that to uncover the identity of the beneficial owner of a patent, parties sometimes must engage in costly, time-consuming litigation. Of course, given the way the laws and rules have developed under the America Invents Act (AIA), it is impossible to know which parties are benefiting from invalidity of a patent at the Patent Trial and Appeal Board (PTAB), and thereby a real party in interest in any rational sense of the term. Predictably, the PPOA only addresses ownership of patents, and does not seek to provide true transparency that would be a two-way street identifying those funding and benefiting from PTAB challenges.

The press release associated with the PPOA explains that the lack of transparent patent ownership information creates a disadvantage “to small businesses that may simply want to contact a patent owner about getting a license but have no way to know who to contact.” The presentation of this concern as unique to small businesses is a stretch, at best, and seems most likely to have been added as a talking point to make this bill seem more palatable to popular press and those with only casual or drive by interest.

The PPOA, by its explicit terms, is aimed at requiring information relating to funding provided by foreign entities and governments because presently, the press release explains, “there is no way to know how many patents are later sold to foreign entities, preventing Americans from even knowing how we are competing globally in innovation.” Of course, the amendment to 35 U.S.C. 261 contained in the PPOA does not simply apply to foreign entities and foreign governments and would require all patent owners to record any interest obtained in a patent within 90 days or forfeit the right to recover for infringement during the period the interest remained unrecorded.

It is no great mystery how America is competing globally. In one word— poorly.

With a Supreme Court that has been hostile to the patenting of new and cutting-edge innovations (i.e., biotechnology and software), a Federal Circuit that has doubled down on Supreme Court precedent and followed the Nations High Court into the patent abyss, and a Congress that has been AWOL on the most important innovation issues of this generation, it is tragically comical that anyone thinks knowing what foreign entities own will provide any insights into American competitiveness.

A Hit and a Miss

In short, the Unleashing American Innovators Act is a worthwhile idea and provides provisions that would help small businesses and independent inventors. The Pride in Patent Ownership Act is more one-sided nonsense that demands one-sided transparency from patent owners while trying to convince the public it will benefit small businesses. What would benefit small business, R&D and job creation is a coherent patent policy that recognizes that the innovations of tomorrow are patentable in the United States the same way they are in Europe and China.