Wednesday, March 24, 1999
RE: 1999 PATENT "REFORM"/-"MODERNIZING" BILL
Remember when you swore to uphold the Constitution of the United States?
As part of that oath, you inherently promised to place the "general
welfare" of the people of the United States ahead of the
welfare of "special interest" groups.
Please see the Preamble of the Constitution, namely, "We the
People of the United States, in Order to .... promote the
This part of your promise will be tested in a subtle and devious way this year.
You will be asked this year to support a so-called "Reform" or
"Modernization" of the venerable U.S. patent system. This
alleged improvement will be a sequel to H.R.400 and S.507 of the 105th Congress (1998).
Please tread carefully.
Our patent system is composed of a delicate balance of trade
offs. If you create an imbalance in one area (e.g., strengthening
the rights of those who choose to not get patents but to instead conceal and secret away their inventions), you may destroy
the whole eco-system (e.g., by discouraging start-up innovators from coming forward with their ideas, from seeking protection under a weakened patent system, and from thereafter publishing their ideas).
The U.S. patent system was established "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"
(Article I, Sec. 8, Clause 8 of
Constitution). This promotion should work hand in hand with the grander goal of promoting the general welfare.
In 1952 Congress understood this. Congress strengthened
the patent laws of the U.S. and thereby encouraged inventors to
participate more frequently in the system, to file patent applications, and to publish their ideas afterwards. Congress guaranteed
inventors at least 17 years of patent enforcement. Congress did away with certain "excuses" that some courts had used to strip
inventors of their patents, such as too easily finding all inventions to be "obvious" in hindsight. All this worked to promote the general welfare and it did a very good job of it. So much so, that around 1982 Congress established a centralized court of special jurisdiction for uniformly protecting the rights of inventors, namely, the Court of Appeals for the Federal Circuit.
Regretfully, in 1995 Congress began to tear down some of the
strong foundations that it had earlier built. Congress eliminated
the guaranteed term of 17 years it had previously granted to inventors. Many members of Congress were fooled into doing so
because of a clever scare tactic that some "special interest" groups had devised.
The scare tactic was given an appealing name, "SUBMARINE PATENTS".
This sound bite evokes images of something dreaded lurking beneath
the surface. Members of Congress were misled into
believing that destruction of the guaranteed 17 year term would make the supposedly-evil, "submarine patents" go away.
Now the "special interest" groups are in a sense admitting it
was all a deception. However they are not telling you, the
Congressman (or woman) to give inventors back the guaranteed term of 17 years. No, they have cooked up a whole new scam.
It is called "PRIOR USER RIGHTS" or the "FIRST TO INVENT DEFENSE".
This sound bite is crafted into fooling you to
believe that somehow you are protecting Yankee ingenuity if you vote for it. Unfortunately you will be doing the exact opposite.
You will be destroying the engines of prosperity that have gotten America to where she is today.
Sadly, there is no 10-second executive summary to explain to you why this is so.
If you are willing to read the additional attachments (Pages 3-..), great. If not, at least remember this: "Prior User Rights" is a cover name for what is in fact a "SHIELD FOR CONCEALERS AND SUPPRESSORS".
I hope you have an open enough mind to at least question these things more deeply.
Although I am a patent attorney practicing in Silicon Valley, California and at times I represent corporate interests, the above is my individual position and not that of my law firm, or any client, or any hidden constituency. Thank you for your time.
Very Patriotically Yours,
Thank you for probing deeper.
Let us consider the good things about the pre-1995 patent system and why it worked so well in promoting the general welfare.
The pre-1995 patent system promoted the general welfare by strongly encouraging inventors to reveal their secrets to the public through use of the patent system. After filing a patent application, the inventor could openly publish without losing rights. Such open publication allowed each next inventor to stand on the shoulders of a previous one and to contribute yet more to the welfare of the general public. Each great invention quickly gave birth to more inventions. The prosperity of our nation flourished. We have seen part of that "miracle economy" kick into high gear over the last few years.
In the electronics industry, for example, one can trace back
to the invention of the telephone. That gave rise to Bell Labs. Bell
Labs produced the transistor. This highly publicized invention quickly gave rise to miniaturized electronics, to the integrated
circuit, to the microprocessor, to affordable desktop computers, to data networking, and ultimately to what we now hail as the
"Internet" (or "the Net" for short).
What if you are asked to now replace that with a patent system
where inventors are discouraged from coming forward with
their ideas? Perhaps the next equivalent of the Transistor-to-Net miracle will be delayed in the US, or perhaps it will take place
first in another country. That would have "negative impact" (as they say) on our economy. The general welfare will be demoted
instead of being promoted.
Of course, one could not imagine that there may be certain "special interest" groups in our nation who are asking you to do just that, who are seeking to promote their own special interests ahead of the "general welfare", could one? Unfortunately, the cruel real-world answer is, yes, there are.
One such "special interest" group is promoting the "Prior User Rights" provision.
This provision encourages large and wealthy corporations to keep their inventions as "trade secrets" rather than revealing them to the public. That means the next Transistor-to-Net miracle may not happen in the US.
Why would these "special interest" groups do such a thing?
The answer is one of simple and selfish economics.
Getting a patent is expensive. Keeping a trade secret is cheap. If you are a company with a dominant market position, and large numbers of inventions, you would so much more prefer to protect most of your IP (Intellectual Property) with trade secrets rather than with patents.
So why don't they do it now? There is a soft underbelly to the
trade secrets-only approach. A daring individual or start up
company might also invent the same technology and file for a patent. If the start up gets the patent, they can sue you for
infringement, even if you were first to invent. This is so because the patent statute does not look with favor upon those who
invent and then suppress or conceal their invention (SEE 35 USC SECTION 102(G)).
Such suppression or concealment of ideas and innovations works against the "general welfare". Accordingly, our current patent laws reward only those who come forward and file a patent, not those who suppress and conceal.
The "Prior User Rights" provision would eliminate this inconvenience
for those who want to keep their innovations as trade
secrets. At the same time it would undermine the intent of 35 USC section 102(g). At the same time it would discourage
individuals or start up companies from inventing in technology areas dominated by the "Big Boys" (e.g., IBM, AT&T, etc.).
Each start-up will have to now worry, "What if one or more of
the Big Boys is holding back on this technology as a trade
secret? If that is true, my patent rights will be eviscerated when the Big Boy raises the "Prior User Rights" shield. They won't
do it until after I sue. Their's is the powerful "SHIELD FOR CONCEALERS AND SUPPRESSORS". I'm David, they are
Goliath. I'll have to take a huge gamble by going forward with my new technology, and by filing patent applications, and by
ultimately suing for patent infringement if I have to. Maybe I should abandon the whole thing? There are too many risks and too
little of a reward."
It should now be apparent that the "Prior User Rights" shield
is a stone that wipes out two birds with one throw. It reduces
start-up competition. And the "Big Boys" get one further benefit. They can start withholding yet more of their inventions from
publication under the patent system. Each will say, "Why should I bother revealing this great invention to my competitors? I can
hold it as a trade secret without worrying anymore that someone else will patent it. Under the SHIELD FOR CONCEALERS
AND SUPPRESSORS that is created by the wonderful, "Prior User Rights" provision I have everything to gain and nothing to
lose by concealing this invention. It's win-win for me."
Regretfully, it is "lose-lose" for the general US public. New
innovators are discouraged from going forward on what could be or could
lead to the-next-great-thing. Publication of new ideas and concepts is
suppressed because the trade secrets approach
takes the lead over the patent-and- reveal approach. The days of the Phone-to-Net miracle are over.
Are you going to support such a devastating outcome by falling for the "Patent Reform" label? I, as one American, hope not.
Now what about that "lie" I mentioned concerning the "submarine
patents". Here is an excerpt from the American Electronics
Association web page that speaks for itself:
AEA believes that reforms are needed now to modernize the U.S. patent system so that it meets the needs of the high-tech industry in the 21st century. AEA also believes that "submarine patenting" deprives the public of the intended benefits of the patent system and can extensively damage businesses, particularly small firms that have commercialized technology believed to be in the public domain. Enactment of meaningful patent reform legislation by the 106th Congress is a high priority for AEA.'
They are now admitting that the 20-years-from-filing gimmick did not eliminate "submarine patenting". It merely cut away some rights that inventors previously had. They are not telling you how the "Prior User Rights" provision will devastate those so-called, particularly small firms. They are not telling you how the "Prior User Rights" provision will encourage the truly big companies to suppress and conceal their inventions from the public.
Again, I hope you have an open enough mind to at least question these things.
Thank for reading on.
Very Patriotically Yours,
Gideon Gimlan, firstname.lastname@example.org
Gideon Gimlan is a Silicon Valley patent attorney. Reprinted with permission.
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Page last updated 3/25/99