Opinions and Editorials

Sep. 21, 2021

IP Watchdog: New Tillis-Leahy Bills to Boost Innovation: The Good, the Bad and the Nonsense by Gene Quinn

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.

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.

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.