Archive for the ‘Inellectual Property’ Category

Black Inventors Honored at Black Inventors Hall of Fame

Tuesday, November 28th, 2023

When I attended the US Inventor first annual conference last month, I had the pleasure of meeting James Howard, Executive Director of the Black Inventor’s Hall of Fame (BIHOF).  He had a display panel at his table that showed a collage of pictures of Black inventors.  Because the breaks between sessions were short, I didn’t have time to talk to him as long as I would have liked, so we caught up on Zoom last week.

I told James that I had browsed every page of the Black Inventors Hall of Fame website as well as his LinkedIn profile and was impressed with his background and experience.  We share a few things in common —we were both born in Chicago, are entrepreneurs, and have taught entrepreneurism. Of course, James taught as a professor at the County College of Morris while I only taught teens how to start their business in an after-school and summer camp program for a non-profit called Millennial Entrepreneurs in the early 2000s.

Besides being an inventor himself, Mr. Howard also brings over 25 years of experience as a design professor and has authored a course on Design Thinking and Design History that explores the impact of design on society. His latest venture is Entrepreneurial U, Morris County’s first school of Design Thinking.” Mr. Howard said, “I have over 20 patents, so I understand what an inventor has to go through before finally getting their patent and a functioning model. I have had numerous patented products succeed on the market.  Most notably the AlarmLock access control lock, and the Vital Signs NeoNatal pressure relief valve for resuscitating infants at birth.

I asked why he founded BIHOF, and he replied, “I founded BIHOF to immortalize the pioneering genius of African American inventors for the past 400 years.  We needed “to recognize and tell the story of African American greats such as George W. Carver who in 1941 was referred to as “The Black Leonardo” by Time Magazine for his prolific contributions in the field of agriculture. Yet, nearly 80 years later, Carver was all but ignored by Time in its list of top 100 American inventors of all time. It is time that exceptional inventors are immortalized by being inducted into the Black Inventor’s Hall of Fame. The story of African American Inventors is a sad history of being lost or simply overlooked. Far too often, historical accounts forget to mention the incredible achievements of Black inventors. I am honored to have the privilege of bringing a broad and detailed awareness of the important work of African American inventors, artists and innovators who have inspired and forged ahead against tremendous odds and adversity.” 

He added, “Every year we induct extraordinary Black inventors into the Black Inventor’s Hall of Fame to permanently recognize their innovative contributions to society. The website serves as a platform telling the story of talented African American innovators.  We include and highlight notable advancements and projects from academia, manufacturing and agriculture to advancements in medicine and the sciences. Our goal is to identify entrepreneurial leaders who have invented and produced groundbreaking technological advancements that improve the quality of life around the world.”  

Mr. Howard said, “What you invent you have to make before you can finalize your model.  It is the basis for innovation, and if we don’t invent, we don’t have products to be made by manufacturers.  There is a link between inventing and entrepreneurism. That is why I started my school of entrepreneurism to help long term unemployed learn new job skills and a new way to achieve a good life. “

He explained, “In our community, we appreciate the importance of inventing and innovation. Finding new ways to do something or make something is woven into our DNA. However, many African Americans have great ideas but they don’t have the benefit of having a “rich uncle” to finance their venture. They have to try to finance it themselves, and the majority don’t succeed.” 

I said I realize that there are nearly 400 inventors listed in Henry Baker’s list of Black Inventors, but this list was published in 1894, so I wondered if he would highlight a few more recent inventors featured in his Hall of Fame.

He responded, “I would feature Dr. Hadiyah-Nicole Green.  She has developed a revolutionary cancer treatment that uses lasers and nanotechnology to eliminate cancer.” Her bio states, “She is a STEM pioneer, leader, humanitarian, and entrepreneur who is introducing the world to the next generation of cancer treatments, cancer charities, and affordable healthcare. She is one of the nation’s leading medical physicists and one of a short list of African American women to earn a Ph.D. in Physics. Dr. Green developed a revolutionary cancer treatment that uses lasers and nanotechnology to eliminate cancer in mice after only one 10-minute treatment in just 15 days with no observable side effects. To ensure the affordability of this treatment, she founded a 501(c)(3) non-profit organization, the Ora Lee Smith Cancer Research Foundation (OraLee.org), to raise the funding for human clinical trials.”

He said he would also include the late Dr. Patricia Bath, who invented “laserphaco, a new device and technique to remove cataracts. It performed all steps of cataract removal: making the incision, destroying the lens and vacuuming out the fractured pieces. She is recognized as the first Black woman physician to receive a medical patent.”

He also mentioned Lonnie G. Johnson, who is a former Air Force and NASA engineer who invented the #1 top selling water toy of all time, theSuper Soaker®.  Coincidently, my husband and I had just watched an episode of The Toys ThatMade America on the History channel featuring the Super Soaker®.   The show told how it took Mr. Johnson eight years to find a Toy company, Hasbro, willing to make a deal to produce and market this toy, which has generated well over $1 billion in sales over its lifetime. The show mentioned that Mr. Johnson’s longtime research focuses on energy technology, and his toy resulted from his work on an environmentally friendly heat pump. His bio states, “He currently holds over 100 patents and has over 20 more pending on products and processes ranging from toys and consumer products to advanced technology energy. He is president and founder of Johnson Research and Development Co., Inc., a technology development company, and its spin off companies, Excellatron Solid State, LLC; Johnson Electro- Mechanical Systems, LLC; and Johnson Real Estate Investments, LLC.”

I told him that when I browsed the website, I saw that he is planning a museum for BIHOF, and he replied, “Yes, we are raising money to build a museum, which we envision to be a 31,000 sq. ft. facility with state of the art, tuition free STEAM classrooms, theater, Metaverse library, startup incubator, and a Legends Hall featuring the top Black inventors of the Golden Era in this country. The BIHOF Museum and STEAM Learning Center is planned to be located in New Jersey. BIHOF is a 501c3 organization, so donations to help build the museum are tax deductible. “

I encourage everyone reading this article to consider making a donation to BIHOF so that Black inventors will receive the recognition they deserve and future inventors will be helped to succeed in the business incubator.

I told James that I was a managing member of a business incubator in the late 1990s and actually wrote my first book on business incubators in 1997 after visiting and researching incubators around the country for five years.  I think the idea of having an incubator for businesses started by Black inventors is a great idea because incubators and the new Makerspaces are very helpful in accelerating successful businesses. 

We both agreed that it is hard enough for any inventor to get a patent, raise the money to make and market a product, or get a licensing deal, but current broken patent system makes it even harder to be successful for both white and Black Americans.  We urgently need the patent reform recommended by US Inventors.  

US Inventor Conference Was an Amazing Success!

Tuesday, November 14th, 2023

US Inventor’s First Annual Conference was held on October 19th and 20th at the U.S. Patent office facility in Alexandria, VA to celebrate 10 years of work to achieve its mission “to restore the patent system to what it once was and to empower inventors to succeed.”  About 150 people attended all or part of the two-day event.  It was a resounding success and truly a remarkable event!

I had the pleasure of attending this event because I have been a board member of the San Diego Inventors Forum since 2014 and have been the liaison between our club and US Inventor, which is the only organization representing small inventors, businesses, and startups to enact change that supports inventors.

The conference was preceded by a day at the Capital where about 30 of us broke up into small groups to meet with the staff of Congressional Representatives in Congress to discuss how to fix the broken patent system. The afternoon included a networking event held in the Rayburn building Gold Room to which Congressional staffers were invited to see the new documentary, Innovation Race, directed by Luke Livingston.  Mr. Livingston attended the whole USI conference and handled the live streaming and recording of the event.

US Inventor founder, Paul Morinville, began the conference Friday morning by saying that he started walking the halls of Congress to advocate for Inventor Rights in 2013 after his aspirations of achieving both the Inventor’s Dream and the American Dream were cut short by the America Invents Act of 2011 (AIA) and establishment of the Patent Trial and Appeal Board (PTAB). He was joined by Randy Landreneau in January 2014.  Paul incorporated US Inventor as a 501(c)(4) non-profit corporation on March 17, 2015 to put a stop to H.R. 9, the Innovation Act. After visiting the offices of every senator, the Innovation Act died in committee in  2016 during the 114th Congress (2015-2016). When Josh Malone joined them in 2017, it greatly helped their efforts.

Space doesn’t permit me to give a full recap of the conference, so I am providing highlights from my notes.  The panels both days were interspersed by the stories of inventors who have had their patents infringed or invalidated by the PTAB.  These stores were heartbreaking, and I could mot do justice to them in writing; you had to hear the stories to get the full impact. 

Next, former USPTO Director, Andrei Iancu, discussed “The Importance of Innovation”, saying in part that “patents and inventions ae part of the American fabric. We should stop and think what the world was like before the U.S. patent system…Every change that we use today was backed by a patent…Patents and the right to have patens are incorporated in the Constitution in Article 1, Section 8. He added that “without the patent system, it is very difficult to raise the money needed to produce and market new products.  There is an inextricable link between IP and innovation and without a secure patent system, innovation is stagnating…Inventors have always been the backbone of the American economy and American dream.”

Paul discussed “Where Did our Patent System Go?” He explained that even before the American Invents Act AIA) was passed in 2011, the Supreme Court decision of “Ebay vs. Merexchange” in 2006 “changed Intellectual property from a personal property to a ‘tort’ or “public franchise” and created a “public interest test’ in order for inventors to receive injunctive relief from infringement.” Injunctive Relief stops an infringer from making selling, or using a patent, but it has become difficult for an inventor to pass the “public interest test” against a large corporation that has saturated the market with the product based on the patent they infringed.

The AIA created the Patent Trial and Appeal Board (PTAB). It is a nonjudicial administrative tribunal within the USPTO. A panel of lawyers are appointed “Administrative Patent Judges” and granted bonuses to revoke patents.  There is no jury and no due process of law.  The PTAB is funded by fees of the petitioner (usually a large corporation that is infringing the patent they are challenging for review).  Currently, the PTAB is invalidating 84% of the patents they review.  

A panel discussion of “PTAB vs. Federal Court:  Comparing the Two Forums” followed that was moderated by Warren Tuttle.  Panelists were Rob Sterne, Adam Mosoff, and Molly Metz. A few comments were:

Adam Mosoff – “The PTAB hasn’t lived up to its expectations. I had told people that the ‘first to file’ vs. ‘first to invent’ and PTAB would be problematic. The PTAB didn’t put in any protections for inventor’s rights. PTAB was characterized as easier for people and faster, but they set up a system that was ultimately faster to lose rights.

Molly Metz – “I spent over $400,000 and it took four years, so it wasn’t cheaper or faster.” (Molly had share he heartbreaking story of her patent infringement and invalidation after Paul’s introduction.)

Rob Sterne – “We need a system that is really faster and fair for people.  The way PTAB law is applied isn’t anything like the way it was supposed to be.  It has put a real damper on investment and innovation in this country.”

The Friday afternoon session included a discussion of “Bleeding You Dry:  The Court’s Misuse of Injunctive” by Thomas Woolsten, founder of Mercexchange and main inventor of 30 patents. He said, “The current system provides strong incentives for patent infringement.  No patent of importance is going to get to the injunctive stage.”

The highlight of the afternoon was “The Great Debate: PREVAIL, PERA, and New Legislation.” Moderated by Paul Morinville.  The panelists were:  Judge Paul Michel, Scott McKeown, Rudy Fink, and Steve Daniels. Judge Michel said, “About 50% of American venture capital is now going overseas to China and other countries…The anti-patent lobby is very large and well-funded.” He supports PERA because “it takes the courts out of the issue of eligibility and solves 80-85% of the problems with patents.”

S. 2140: Patent Eligibility Restoration Act of 2023 (PERA) introduced by Senators Thomas Tillis (R-NC) and Christopher Coons (D-DE) on 6/22/2023 was discussed in my article “Inventor Rights Still Being Threatened.”

S. 2220: PREVAIL Act was introduced on Jul 10, 2023 by Senator Christopher Coons (D-DE) – “A bill to amend title 35, United States Code, to invest in inventors in the United States, maintain the United States as the leading innovation economy in the world, and protect the property rights of the inventors that grow the economy of the United States, and for other purposes.”

Friday’s event concluded with remarks from Judge Pauline Newman, followed by a networking cocktail reception.

There isn’t enough space in this article to permit a recap of the topics covered at the Saturday event. The following topics were discussed:

“Does ‘Any” mean ‘Any’? Ask Alice” presented by Robert Greenspoon.

Why and How 97% of IP Portfolio Owners Destroy Most of their Portfolios” discussed by panelists Evan Langdon, Jack Lu, and Russ Genet and moderated by Steve Taylor

“How to Survive the Patent System” discussed by Jeff Hardin, Josh Malone and Paul Bartkowski that was moderated by Eli Mazour.

“New Solutions for New Problems:  Freezing Assets of Online Infringers on Amazon, YouTube, Facebook, and the Internet” presented by Joel Rothman.

The afternoon concluded with a discussion of “Advocating for a Stronger Patent System” by panelists Paul Morinville, Molly Metz, Cliff Maloney, Justin Greiss, and Randy Landreneau.

An awards ceremony and dinner took place that evening at the Holiday Inn Carlyle in Alexandria, VA where attendees stayed. Awards presented were:  Michael Kintner: The Inventor; Molly Metz: The Advocate; John Murray: The Warrior; Jeff Hardin: The Veteran.

In closing, Paul said, “We are honored to have such a significant turnout for our first event and incredibly grateful to our members, speakers, and sponsors for making this event possible. We have so much work to do, and I hope the event, discussions, panels, and presentations allowed USI members to feel empowered and motivated to enact change.”

Inventor Rights Still Being Threatened

Tuesday, September 5th, 2023

During the 117th Congress (2021-2022), several bills were introduced with the purported purpose of restoring inventors’ rights and fixing some of the problems generated by that Act Leahy–Smith America Invents Act (AIA) of 2011. None of these bills were passed by both the House and Senate, and most didn’t even get out of committee for a vote. A few of these bills would have actually made matters worse, so it was a good thing they didn’t pass. Only one bill was supported by the top inventors’ group, US Inventor.

The bills not supported by US Inventor were:

S.2774 – Pride in Patent Ownership Act was introduced by Senator Patrick Leahy (D-VT) on  09/21/2021.  This bill looked good for either being passed by the Senate separately before Congress recesses for the holidays or passed by being attached to the National Defense Authorization Act (NDAA). The NDAA is “must pass” legislation funding the military at a time when there are credible threats of wars around the world. Attaching the Pride in Patent Ownership Act to the NDAA means it would certainly have become law. Fortunately, neither of these predictions came true.

S. 2891, The Restoring the America Invents Act, introduced by and Patrick Leahy (D-VT) into the Senate on September 29 2021 and referred to the Committee on the Judiciary, but was not voted on by the Senate before the end of the 117th Congress.

HR 5902, The Clear Patents Act, introduced by Representative Darrell Issa (R-CA) on 11/05/21 to the House. This bill was also referred to the Committee on the Judiciary, but was not voted on by the House before the final recess at the end of 2022.

S.4734 – Patent Eligibility Restoration Act of 2022  was introduced by Senator Thomas Tillis (R-NC) on 08/02/2022.  This bill was referred to the Committee on the Judiciary, but was not voted on by the Senate before the end of the 117th Congress.

The only bill supported by US Inventor was:

HR 5874, Restoring America’s Leadership in Innovation Act of 2021 (RALIA), was introduced into the House by Representative Thomas Massie (R-KY) on 11/04/2021 and referred to the Subcommittee on Courts, Intellectual Property, and the Internet. US Inventor supported this bill because it was “designed to restore to Americans a patent system “as the Constitution of the United States originally envisioned it.”

Representative Massie’s press release stated, “The RALIA legislation restores to Americans a patent system as the Constitution of the United States originally envisioned it,” said Congressman Massie. “In Article 1, Section 8 of the Constitution, the Founding Fathers gave Congress the authority to protect the discoveries of inventors. Specifically, they created a patent system 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.’  I am sad to say that this bill was also not voted on by the House before the end of the 117th Congress.

The above bills introduced in 2021 were discussed in more detail in my blog article, “Inventors Rights Must be Restored” published by Made in America Movement in January 2022.

What many people do not realize is that bills not passed by the end of the Congressional session, in this case the 117th, are considered “dead” and must be reintroduced in the session of the next Congress, which is now the 118th Congress (2023-2024).

Thus far, none of these bills have been reintroduced by their sponsors, but one of the bills introduced in the 117th Congress has been re-introduced recently.

S. 2140: Patent Eligibility Restoration Act of 2023  was introduced by Senators Thomas Tillis (R-NC) and Christopher Coons (D-DE) on 6/22/2023. The brief description states, “To amend title 35, United States Code, to address matters relating to patent subject matter eligibility, and for other purposes.”

The need for this bill was provided in the “Findings” section:

  1. “patent eligibility jurisprudence interpreting section 101 of title 35, United States Code, requires significant modification and clarification….
  • the Supreme Court of the United States and other courts created judicial exceptions to the wording of that section, thereby rendering an increasing number of inventions ineligible for patent protection…
  • Efforts by judges of district courts and courts of appeals of the United States to apply the exceptions described in paragraph (2) to specific circumstances have led to extensive confusion and a lack of consistency— throughout the judicial branch of the Federal Government and Federal agencies; and among patent practitioners…
  • Many judges of the United States Court of Appeals for the Federal Circuit and of various district courts of the United States have explicitly expressed the need for more guidance with respect to the meaning of section 101 of title 35…”

“Under this Act, and the amendments made by this Act, the state of the law shall be as follows:

(A) All judicial exceptions to patent eligibility are eliminated.

(B) Any invention or discovery that can be claimed as a useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, is eligible for patent protection, except as explicitly provided in section 101 of title 35, United States Code, as amended by this Act, as described in subparagraphs (D) and (E) of this paragraph.”

The statements describing what the bill will do sound good at first reading, but the “devil is in the details” of subparagraphs (D) and (E), as well as the amendments to Section 3 of the bill – Patent Eligibility.

This bill was reviewed in detail during weekly Zoom meetings held by US Inventor for several weeks after the bill was introduced in June.  These reviewers included retired judges, patent attorneys, and inventors.  As a result of this intensive review, US Inventor released a policy paper, titled “PERA Starts by Making Nearly All Inventions Implemented in Software Patent Ineligible:” 

“PERA abrogates all judge-made exceptions, including the abstract idea in its preamble (however,

not in the law), yet it introduces new exceptions disqualifying entire swaths of technology as ineligible for patent protection. An invention is ineligible if:

‘‘(B)(i) Subject to clause (ii), a process that is substantially economic, financial, business, social, cultural, or artistic, even though not less than 1 step in the process refers to a machine or manufacture.’

Nearly any invention can be categorized as economic, financial, business, social, cultural, or artistic. Most inventions implemented in software are claimed as a process. This extraordinarily broad language means that inventions implemented in software are ineligible for patent protection right from the starting gate.” 

According to the U S Inventors end of the year report, “The Patent Trial and Appeal Board (PTAB) has cancelled claims in 84% of the 2,500+ patents reviewed since 2011 and most inventors do not have a half a million dollars necessary to fund a legal defense.”

This is why US Inventor policy paper states, “PERA Must Remain a Vehicle for Section 101 Debate.

Judge-made law regarding Section 101 eligibility is severely restricting U.S. innovation, allowing our adversaries like China as well as others to take the lead in global innovation. This is severely damaging U.S. national and economic security.

Congress must fix Section 101 correctly. The influence of powerful lobbies must be leveled by arguing the merits of the legislation openly and transparently in Congress.

The authors of PERA must provide a clear and sound public policy justification for making such huge swaths of technologies ineligible for patent protection where there are no similar restrictions in other countries.

Once Congress agrees to a public policy position on Section 101, then the words of PERA must be precisely defined to ensure that the policy is effectuated in legislation, leaving no ambiguity for judge-made law to override it.”

The paper concludes, “For the foregoing reasons, US Inventor opposes PERA as written, but PERA should not die. It presents a valuable opportunity to initiate open and transparent debate in Congress so that the U.S. public policy regarding patent eligibility can be properly formed, and legislation can be crafted to effectuate that public policy.”

If you support patent rights you can sign the Inventors’ rights Resolution here.  You can also join US. Inventors as a supporting member here.  If you have the time, you can also attend US Inventor’s first annual conference in Washington, D.C. on October 19-21, 2023 to celebrate years 10 years of work.  There are over twenty confirmed speakers, and the plan is to bring you an event full of presentations, panel discussions, and plenty of networking opportunities. The tickets include access to all presentations, discussions, and informative opportunities, as well as access to event receptions, breakfasts, and dinner.  More Details and Register: www.usinventor.org/usi-conference

Manufacturing is the Engine of American Technology Development and Innovation

Tuesday, July 7th, 2020

The fourth reason why manufacturing is important is that American manufacturers are responsible for more than two-thirds of all private sector R&D, which ultimately benefits other manufacturing and non-manufacturing activities. Nearly 60 percent of new patents derive from the manufacturing sector and the closely integrated engineering and technology-intensive services.

Manufacturing R&D is conducted in a wide array of industries and businesses of all sizes. The heaviest R&D expenditures take place in computers and electronics, transportation equipment, and chemicals (primarily pharmaceuticals).

The competitive status of U.S. manufacturing had been increasingly challenged by the state-of-the-art technologies being developed by established nations such as Japan, Germany, Korea, and Taiwan. China has acquired advanced manufacturing capability through R&D tax incentives, incentives for direct foreign investment, and theft of intellectual property.

According to the 2018 annual survey conducted by the Industrial Research Institute (IRI), 59 percent of the companies responding said they plan to increase R&D spending in 2018; only 29 percent reported anticipating little or no change, and 13 percent are expecting a decrease in total R&D spending.” Note:  This is the last year that the report is available for free, 2019 and 2010 reports now cost $51.)

“The State of U.S. Science and Engineering 2020” report by the National Science Board of the National Science Foundation states, “Although the levels of federal R&D funding rose across performing sectors between 2000 and 2017, the share of total U.S. R&D funded by the federal government declined from 25% to 22%…By type of R&D, the shares of federal government funding for basic research and experimental development declined since 2000 despite rising levels of funding. The federal government is a major funder of basic research, and between 2000 and 2017, the share of basic research funded by the federal government declined from 58% to 42%. Federally funded applied research was an exception during this period, as both the level and share rose.”

America’s manufacturing innovation process leads to investments in equipment and people, to productivity gains, the spreading of beneficial technology to other sectors, and to new and improved products and processes. It is an intricate process that begins with R&D for new goods and improvements in existing products. As products are improved in speed, accuracy, ease of use, and quality, new manufacturing processes are utilized to increase productivity. Education and training of employees is required to reap the benefits of such improvements in manufacturing processes.

Innovation is the hallmark of U.S. manufacturing, and it requires a certain mass of interconnected activities, which, like a snowball rolling downhill, grows in size as it proceeds toward end users. Substantial R&D is required to keep the ball rolling to ensure more successes than failures.

Innovation and production are intertwined. You need to know how to make a product in order to make it better. “Most innovation does not come from some disembodied laboratory,” said Stephen S. Cohen, co-director of the Berkeley roundtable on the International Economy at the University of California, Berkeley. “In order to innovate in what you make, you have to be pretty good at making – and we are losing that ability.”

Manufacturing is an incubator for technology and science, which require proximity to facilities where innovative ideas can be tested and worker feedback can fuel product innovation. Without this proximity, the science and technology jobs, like customer service jobs, follow the manufacturing jobs overseas.

The ability to fund R&D comes largely from the profits that a company can invest back into its business. Thus, the available cash flow of manufacturing companies is closely linked to their ability to conduct R&D as well as make capital investments.

The process through which R&D promotes economic prosperity is complex and multi-faceted. First, there are direct benefits to firms from their own R&D investments. Second, other companies derive benefits from the R&D of the innovating company in a “spillover” effect. Third, the feedback from R&D and its spillovers improves other products, processes, and distribution networks. Fourth, one industry’s investment has a beneficial effect on other industries and the U.S. economy as a whole. “Spillover” effects are increased through sales transactions and knowledge transfers when the parties involved are interdependent and closer in geographic proximity.

Consumers have benefited greatly from the large selection and quality of manufactured goods available as a result of the innovative new products resulting from R&D. U.S. consumers now have a dizzying array of products from which to choose. Quality improvements in manufactured goods have also reduced the frequency of repair and reduced the cost of operation.

The maintenance of an effective U.S. R&D network is essential for attracting domestic and foreign R&D funds and the subsequent manufacturing that results from the innovation process, which increases U.S. value added, resulting in economic growth.

The problem today is that with the offshoring of so much manufacturing, certain tiers in the high-tech supply chain have disappeared in the U.S. When a tier in a supply chain has been moved offshore, domestic research and other supporting infrastructure are degraded, which can be a major problem for U.S. manufacturers transitioning to the next product life cycle.

In the past, technology would flow from new domestic R&D-intensive industries into the remainder of the economy, boosting overall national productivity. Today, such emerging technologies are flowing at least as rapidly to the innovators’ foreign partners or suppliers.

In the report “The Case for a National Manufacturing Strategy,” authors Ezell and Atkinson wrote, “manufacturing, R&D, and innovation go hand-in-hand.” They concur with my argument that “the process of innovation and industrial loss becomes additive. Once one technological life cycle is lost to foreign competitors, subsequent technology life cycles are likely to be lost as well.”

They add “[T]here is a deeply symbiotic, interdependent relationship between the health of a nation’s manufacturing and services sectors: the health of one sector greatly shapes the health of the other. In particular, the technology-based services sector depends heavily on manufactured goods.”

In my opinion, it doesn’t matter whether American companies do their R&D within their own facility or hire it to be done by outside American consultants or product development firms, but it does matter whether the R&D is done within America. We need to keep innovation within our country if we want to remain on the cutting edge of technology and maintain the critical mass of our manufacturing industry. Outsourcing R&D to China is like a mayor giving the key to his city to a would-be conqueror. We need to protect the key to our future security as a nation and keep R&D and manufacturing within the United States.  

This intricate process of R&D and product development generates greater growth and higher living standards than any other economic sector. But it requires a critical mass to generate this wealth. If the U.S. manufacturing base continues to shrink at its present rate, the critical mass will be lost. The manufacturing innovation process will shift to other global centers, and a decline in U.S. living standards will be the result.

Would H.R.3666 – STRONGER Patents Act of 2019 be Beneficial to Inventors?

Tuesday, March 10th, 2020

On July 10, 2019, H.R. 3666, the “STRONGER Patents Act of 2019,” was introduced in Congress and referred to the Committee on the Judiciary and the Committee on Energy and Commerce. The purpose of the Act is “To strengthen the position of the United States as the world’s leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country’s economy.”

This bill is a reintroduction of the Stronger Patents Act of 2017 that never got out of committee.  It has a long list of bi-partisan co-sponsors:  Rep. Stivers (R-OH), Rep. Mr. Foster (D-IL), Rep. McClintock (R-CA), Rep. Velázquez (D-NY), Rep. Babin (R-TX), Rep. Burgess (R-TX), Rep. Hill (R-AK), Rep. Huizenga (R-MI), Rep. Joyce (R-OH), Rep. King (R-NY), Rep. Norman (R-SC), Rep. Watson Coleman (D-NJ), Rep. Suozzi (D-NY), Rep. Peters (D-CA), Rep. Gosar (R-AZ), and Rep. Davidson (R-OH).

The “Findings of Congress” in the Act make several points similar to those made in the “Findings of Congress” for H.R. 5478, the Inventor Rights Act, regarding the importance of patents as “the foundation for the exceptional innovation environment in the United States” and “an essential part of the country’s economic success.” It includes reference to the fact that “strong patent protection improves the chances of success for small companies and increases their chances of securing financing from investors.”

Of particular note, the “Findings” state that “unintended consequences of the comprehensive 2011 [America Invents Act] reform of patent laws are continuing to become evident, including the strategic filing of post-grant review proceedings to depress stock prices and extort settlements, the filing of repetitive petitions for inter partes and post-grant reviews that have the effect of harassing patent owners, and the unnecessary duplication of work by the district courts of the United States and the Patent Trial and Appeal Board;”

This “Finding” refers to the abuse of invalidating patents by the Patent Trial and Appeal Board mentioned in my blog article of February 12th about the Inventor Rights Act.

In addition, the “Findings” point out that “efforts by Congress to reform the patent system without careful scrutiny create a serious risk of making it more costly and difficult for legitimate innovators to protect their patents from infringement, thereby weakening United States companies and the United States economy.”

The Stronger Patents Act of 2019 is much more complex that the simple one-page bill for the Inventor Rights Act.  Since I am not a lawyer, I do not have the legal expertise to analyze each of the specific clauses of the Act.  However, I will highlight certain sections that are particularly beneficial to inventor rights and attempt to correct specific problems created by the America Invents Act of 2011.

For example, in “SEC. 102. Inter partes review,” the proposed amendments would help reduce the invalidation of patents that is now occurring in PTAB cases. The bill states:

“(A) each challenged claim of a patent, or claim proposed in a motion to amend, shall be construed as the claim would be construed under section 282(b) in an action to invalidate a patent, including by construing each such claim in accordance with—

(i) the ordinary and customary meaning of the claim as understood by a person having ordinary skill in the art to which the claimed invention pertains; and

(ii) the prosecution history pertaining to the patent; and

(B) if a court has previously construed a challenged claim of a patent or a challenged claim term in a civil action to which the patent owner was a party, the Office shall consider that claim construction.”

The “Burden of proof.—Section 316(e) of title 35, United States Code, is amended to read as follows:

(1) PRESUMPTION OF VALIDITY.—The presumption of validity under section 282(a) shall apply to a previously issued claim that is challenged during an inter partes review under this chapter.

(2) BURDEN OF PROOF.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability of a previously issued claim by clear and convincing evidence.”

One of the important amendments in Sec. 103. Post Grant Review, adds the following new subsection: “(d) Persons that may petition.—

(2) NECESSARY CONDITIONS.—A person may not file with the Office a petition to institute a post-grant review of a patent unless the person, or a real party in interest or privy of the person, demonstrates—

(A) a reasonable possibility of being—

(i) sued for infringement of the patent; or

(ii) charged with infringement under the patent; or

(B) a competitive harm related to the validity of the patent.”

Two of the amendments to SEC. 104. Composition of post-grant review and inter partes review panels, amend Section 6(c) of title 35, United States Code as follows:

“(1) IN GENERAL.—Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director.

(2) INELIGIBILITY TO HEAR REVIEW.—A member of the Patent Trial and Appeal Board who participates in the decision to institute a post-grant review or an inter partes review of a patent shall be ineligible to hear the review.”

SEC. 105. Reexamination of patents amends the process of requesting a reexamination, while SEC. 106. Restoration of patents as property rights states is amended to provide injunctive relief stating:

“(b) Injunction.—Upon a finding by a court of infringement of a patent not proven invalid or unenforceable, the court shall presume that—

(1) further infringement of the patent would cause irreparable injury; and

(2) remedies available at law are inadequate to compensate for that injury.”

One of the problems that this Act addresses is the diversion of fees paid to the USPTO. Currently funds can be diverted to fund other agencies and cover other government expenses.  By this Act, SEC. 107. Elimination of USPTO fee diversion, clause regarding  (a) Funding.—Section 42 of title 35, United States Code, is amended as follows:

“(1) IN GENERAL.—Fees authorized in this title or any other Act to be charged or established by the Director shall be collected by the Director and shall be available to the Director until expended to carry out the activities of the Patent and Trademark Office.”

Item “(2) ESTABLISHMENT.—There is established in the Treasury a revolving fund to be known as the ‘United States Patent and Trademark Office Innovation Promotion Fund’.”

I particularly support the addition of SEC. 109. Assisting small businesses in the U.S. patent system, which states in part:

“(b) Small Business Administration report.—Not later than 1 year after the date of the enactment of this Act, the Small Business Administration, using existing resources, shall submit to the Committee on Small Business and Entrepreneurship of the Senate and the Committee on Small Business of the House of Representatives a report analyzing the impact of—

(1) patent ownership by small business concerns; and

(2) civil actions against small business concerns arising under title 35, United States Code, relating to patent infringement.

(c) Expansion of patent pilot program in certain district courts.—

(1) IN GENERAL.—Not later than 180 days after the date of the enactment of this Act, the Director of the Administrative Office of the United States Courts shall designate not fewer than 6 of the district courts of the United States that are participating in the patent cases pilot program established under section 1 of Public Law 111–349 (28 U.S.C. 137 note) for the purpose of expanding that program to address special issues raised in patent infringement suits against individuals or small business concerns.

(2) PROCEDURES FOR SMALL BUSINESSES.—Not later than 2 years after the date of the enactment of this Act, each district court designated under paragraph (1) shall develop procedures for expediting cases in which an individual or small business concern is accused of patent infringement.

While this bill addresses many of the problems caused for the America Invents Act of 2011, it does not address the most egregious provision of that Act; namely, changing our patent system from a “first to invent” to a “first to file” system.  This change has done the most damage to the individual inventor or small business entity.  While a provisional patent that is good for one year is relatively inexpensive, it is expensive and time consuming to pursue obtaining a non-provisional patent (3-5 years average).  Individual inventors have to be extremely cautious not to reveal information on their technology to prevent others from being first to file a patent for the technology they invented. 

Because of the complexity of this bill, I don’t think it has any greater chance of getting out of committee to be voted on by the whole of Congress this year than the Stronger patent Act of 2017. In fact, it may have less chance in the Democrat-controlled House with many more Republican than Democrat co-sponsors. In my opinion, I think the simple, one-page Inventor Rights Act has a much better chance of being brought to the House floor for a vote this year, and it will restore the rights of inventor to their patents.

H.R. 5478 would Protect Inventors Rights

Tuesday, February 11th, 2020

On December 18, 2019, H.R. 5478 was introduced by introduced by Representatives Danny K. Davis (D-IL) and Paul A. Gosar, D.D.S. (R-AZ), and on January 28, 2020, it was referred to the Subcommittee on Courts, Intellectual Property, and the Internet. This Act that would restore patent protection for inventors and mitigate a generation of laws, regulations, and court decisions discouraging innovation by failing to secure to inventors the exclusive rights to their discoveries.

It is crucial that this Act be passed this year because our patent system is in crisis. The text of the Act states “Recent changes to patent laws and procedures and Supreme Court decisions have adversely affected inventors such that the promise of Article 1, section 8 of the Constitution of ‘securing for limited times to inventors the exclusive right to their discoveries’ is no longer attainable.”  The biggest change to the U. S. patent system was made by the America Inventors Act of 2011,  

The Act states that “Inventors are denied the fundamental right to ‘exclude others’ by the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange, LLC.” Thus, inventors have lost their injunctive rights granted by the Constitution.  It also states that “Inventors were stripped of the right to file suit in their own judicial district by the Supreme Court’s 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands LLC.

Imagine if you invested in a house, moved in, started to enjoy it, and then had squatters arrive, whom you can’t legally kick out. Yes, you could charge them rent, but if you can’t kick them out, they have no incentive to pay! They would just keep squatting and living in your house for free. That’s what has happened to our patent system.

The ability to stop others from infringing on inventor’s patent rights was what helped big tech companies years ago. Amazon never would have existed without Jeff Bezos’ patent for “the one click purchase” that he licensed to Apple to use for their app store.  Amazon and Microsoft ere helped to grow by their patent licensing revenue.

Now, large companies are stealing patents and inventors can’t stop them from using the technology. These large corporations are choosing to spend years in court in a process called “efficient infringement,” by paying legal fees to harm new innovation by inventors instead of paying fair licensing royalties to grow the new innovation. The inventors have to incur extensive legal fees to protect their patents, which often bankrupts them if they can even afford to initiate a lawsuit.

  While American innovation is faltering to grow here, China has out legislated America, (learning from our mistakes by mandatory licensing and punitive damages on intentional infringement to quickly grow innovation. Their strong patent legislation is growing their economy exponentially. They now have a billion dollar start up every three days in crucial fields like AI, 5G, and other new technologies, while in America we have none.

Instead, we only have large USA corporations stealing innovation from small companies, then bankrupting them in Patent Trial and Review Board (PTAB) trials by judges appointed by the USPTO at a rate of around 86%.

For further information on the patent crisis, you may watch the trailer for the documentary Invalidated: The Shredding of the U.S. Patent System  The full version is available on Amazon and iTunes.

Attempts to undo the damage of the America Invents Act of 2011 and Supreme Court decisions isn’t new.  There were three bills related to patents/inventor rights were introduced in the 115th Congress (2017-2018), but they never got out of committee for a vote on the House floor:

H.R.6557, Inventor Protection Act – “To amend title 35, United States Code, to restore patent rights to inventors, and for other purposes.” It was designed to restore patent protection for inventors by reversing a generation of laws and regulations.  (Sponsored by Rep. Dana Rohrbacher, R-CA)

S.1390, Stronger Patents Act of 2017A bill to strengthen the position of the United States as the world’s leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country’s economy. (Sponsored by Sen Chris Coons (D-DE)

H.R.6264 – Restoring America’s Leadership in Innovation Act of 2018 – A bill “to promote the leadership of the United States in global innovation by establishing a robust patent system that restores and protects the right of inventors to own and enforce private property rights in inventions and discoveries, and for other purposes.” (Sponsored by Rep. Thomas Massie (R-KY)

H.R 5478 is a simple bill that would protect inventor’s rights. The main provisions of H.R. 5478 are:

“SEC. 3. Inventor protections.

(a) Inventor-Owned patent. —Section 100 of title 35, United States Code, is amended by adding at the end the following:

(k) The term ‘inventor-owned patent’ means a patent with respect to which the inventor of the invention claimed by the patent or an entity controlled by that inventor—

(1) is the patentee; and

(2) holds all ‘substantial rights.’

(b) Inventor-Owned patent protections.—Chapter 32 of title 35, United States Code, is amended by adding at the end the following new section:

§ 330. Inventor protections

(a) Protection from post issuance proceedings in the united states patent and trademark office. —The United States Patent and Trademark Office shall not undertake a proceeding to reexamine, review, or otherwise make a determination about the validity of an inventor-owned patent without the consent of the patentee.

(b) Choice of venue. —Any civil action for infringement of an inventor-owned patent or any action for a declaratory judgment that an inventor-owned patent is invalid or not infringed may be brought in a judicial district—”

As the findings cited in the Act state, “Inventors have contributed significantly to innovation in the United States and their continued dedication to inventing and sharing solutions to modern technical challenges is essential for the United States to maintain leadership in the global economy.” It is crucial for inventors to be able to have some assurance that the rights to their patents will be reviewed in a consistent manner, so that they will be able to secure investors and get their product into the marketplace.

Josh Malone, volunteer advocate and inventor of top selling Bunch O Balloons emailed me, “Our patent system was intended to incentivize individual inventors but has recently been captured by trillion-dollar corporations. Small businesses have virtually no chance when it costs tens of millions of dollars and takes a decade or more to bring an invention thief to justice. Inventors need to make their voices heard by contacting their Senators and Representatives to tell them to repair our innovation system by passing the Inventor Rights Act.”

In order to ensure that H.R. 5478 gets out of committee review and is voted upon by Congress, more co-sponsors are needed. Please urge your Congressional Representative to co-sponsor H.R. 5478, which would restore patent protection for inventors and mitigate the laws, regulations, and court decisions that have discouraged innovation by failing to secure to inventors the exclusive rights to their discoveries.

Congress Must Protect Inventor Rights

Tuesday, April 2nd, 2019

Ever since the Leahy-Smith America Invents Act was passed by the 112th Congress in 2011, inventors have been discouraged to innovate by failing to secure the exclusive rights to their inventions through a patent.

It was bad enough that the Act changed patent law from a “first to invent” to “a first to file” for patents. It also created new and easier ways to invalidate an existing patent. Prior to this, to invalidate a patent required going to a judicial court with a jury and its various protections offered to the holder of a property right. The Act created procedures for an administrative court, the PTAB (Patent Trial and Appeals Board), that does not have the same protections.  PTAB has become a nightmare for inventors because it allows infringers to challenge the validity of patents in the PTAB. Some inventors have faced hundreds of thousands of dollars in legal expense and annihilation of their patent rights in unlimited third-party patent validity challenges. Serial petitions are common with valuable patents suffering a dozen or more attacks with costs typically being in excess of $350,000 for each PTAB defense.

Some inventors have endured up to a decade and spent tens of millions of dollars in legal expense to obtain a final judgment in court against infringers of their patent.  Even then, inventors have not been not compensated fairly or sufficiently to prevent infringement of their patent rights.

For example, in the Amazon documentary, Invalidated: The Shredding of the U.S. Patent System,  Josh Malone, the inventor of Bunch O Balloons, stated that his court case against Telebrands has cost over $20M.  It also documented how Dan Phillips, inventor of the Bionic Wrench, has been fighting Sears in court since 2012. A judge recently tossed out the jury verdict that held Sears liable because of their bankruptcy. I understand his appeal process will take several more years. (Note:  The full version is available now on Amazon and iTunes)

It’s not just China that is stealing our technology; it is U.S.-based corporations stealing technology from inventors right and left. Google, Apple, Amazon, Telebrands and other big corporations are getting away with profiting from pirated product. Why should large corporations be allowed to steal inventions and block access to the legal system for private inventors and small businesses? How can a small business survive if it takes a decade and millions of dollars in legal expense to protect intellectual property rights? 

According to Randy Landreneau, President of US Inventor, Inc., “Current policies and case law focus instead on patents as monetary assets held by corporations, injecting extremely high cost and risk to enforcing any single patent and making patent enforcement a ‘game of kings.’ Big corporations play the game by hiring dozens of lawyers, hoarding hundreds of patents, and pouring millions of dollars into litigation. Inventors cannot play that game and need a viable path to enforce their patent rights because PTAB rulings have canceled claims in 85% of issued patents. This is disheartening and discouraging to inventors and startups in our community.”

He added, “In the rare instance that the PTAB permits an inventor to keep his patent, there is no monetary recovery. This means the inventor has nothing to offer a law firm to take the case on a contingency basis. Pro bono defense is not available either. Inventors with valuable inventions have virtually no chance of keeping their patents in the PTAB.”

Last year three bills were introduced to Congress to protect inventors rights, but these bills never got out of committee for a vote on the House floor:

H.R.6557, Inventor Protection Act – “To amend title 35, United States Code, to restore patent rights to inventors, and for other purposes.” It was designed to restore patent protection for inventors by reversing a generation of laws and regulations. 

S.1390, Stronger Patents Act of 2017A bill to strengthen the position of the United States as the world’s leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country’s economy.

H.R.6264 – Restoring America’s Leadership in Innovation Act of 2018 – A bill “to promote the leadership of the United States in global innovation by establishing a robust patent system that restores and protects the right of inventors to own and enforce private property rights in inventions and discoveries, and for other purposes.”


In order to foster the development of American manufacturing, Article I, Section 8, Clause 8 of the Constitution states that the Congress shall have the power “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.”

This enabled America to become the world leader in innovation, driven largely by this simple yet profound promise to inventors of the exclusive right to their discoveries. Without secure patent rights, inventors are starved of time and capital required to explore and develop new technologies. Today, the United States faces an escalating innovation crisis as we are forced to rely on outdated or imported technologies. Congress must act quickly to restore reliable patent rights for inventors.

As a mentor for San Diego’s CONNECT Springboard accelerator program for a few years and a director on the board of the San Diego Inventors Forum, I work with inventors designing new products or break-through technologies. Local inventors have the opportunity to compete in the San Diego Inventors Forum annual invention contest for best new consumer product or best new technology. All contestants must have applied for at least a provisional patent before they can participate. The future success of their product or technology is contingent upon their having a patent they can protect from infringement. Their ability to raise the financial investment they need to bring their product to the marketplace depends upon their being able to protect their patent.

Why is this important? Because most new technologies, especially break-through or disruptive technologies, come from individual inventors who either start a company or license their technology to companies that are more able to take them to the market. It is critical for inventors to be able to have some assurance that the rights to their patents will be reviewed in a consistent manner so that they will be able to secure investors and get their product into the marketplace.

Inventors must be equipped and motivated to apply their knowledge and creativity to solving problems.  In order to encourage inventors to share their discovery in exchange for a time-limited exclusive right, patents owned by the original inventor must be protected from the policies that target assets held and traded by non-inventors.

The United States must retake the lead in the next wave of technological innovation in areas like quantum computing, artificial intelligence, and medical diagnostics. Protection for discoveries is these fields is the absolute best way to promote progress in science and useful arts in our modern day.

US Inventors started off The Inventor’s Project in February by co-hosting an open house on Capitol Hill with the Congressional Inventions Caucus. A bipartisan group of Congressional members and staff attended. As a result, the Inventions Caucus will continue to grow and support the mission of educating Congress on the importance of innovation and small inventors and promote the Inventor Rights Resolution.

SUMMARY OF THE RESOLUTION

Our patent system is in crisis. Recent changes to patent laws and Supreme Court decisions have adversely affected inventors such that the requirement in Article I, Section 8 of the Constitution of “securing for limited times to inventors the exclusive right to their discoveries” is no longer achieved. It is nearly impossible to stop an infringer from using an invention without permission, or to make them to pay for the damage caused when they do. The undersigned inventors call on Congress to pass legislation to address these critical issues.

PTAB

The USPTO Must Stop Taking Back Patents from Inventors

INJUNCTIONS

Courts must prohibit the use of a patented invention without permission

PROFITS

Infringers must not profit by using an invention without permission

We must stop the America Invents Act from gradually destroying the American Patent System. We need to encourage our own Congressional Representative to co-sponsor or support an Inventor Rights Act to restore our rights as inventors in this Congress and reinvigorate the famous American innovation system.  Join us by signing the Inventor Rights Resolution

Innovative Products Featured at San Diego Inventors Forum Invention Contest

Tuesday, November 6th, 2018

This year’s invention contest held on October 11, 2018 by the San Diego Inventors Forum was incredible. I’ve been attending the contests for nine years, and this year, there were so many unique, useful inventions that it was very difficult to vote for my favorite invention.

The mission of the San Diego Inventors Forum is to help inventors to become entrepreneurs to create new companies and jobs here in San Diego. Monthly meetings have been held on the 2nd Thursday of each month. Meetings are held at AMN Healthcare, 12400 High Bluff Drive, San Diego, CA 92130.The next meeting will be this Thursday, November 8, 2018.  Networking starts at 6:30 pm, and the meeting starts at 7:00 pm.

At the monthly meetings, inventors meet other successful, local inventors in many different fields and learn how they developed their marketable products. The give inventors the opportunity to network with fellow creative people and get guidance and encouragement to take their first or next steps necessary to turn their ideas into a reality.

At the beginning of each meeting, new attendees are able to introduce themselves and ask financing, business, licensing, marketing, legal and engineering questions.  They can present their ideas to private individuals or for focus group review.  They also get to ask for particular resources they are looking for so their needs can be matched.  During the “Who Needs Who?” portion of the meeting, service providers can personally introduce their services.

Inventors can pay $100 for a one-year membership or pay $10 for each meeting they attend. During the course of the year, program topics cover everything subject you need to know from capturing the concept to getting investors to marketing your product.

The 2018 contestants were:

  • Andrew Bataller,  iPad Case  
  • Gerry Klassen, New Painting Tool
  • Phillip Perez for his Impact Tool shovel
  • Eric Robinson for his Green Launch orbital launch service
  • Michael Rodgers, The One-Handed Hamper
  • Dave Schmoyer, Pill or Parts Pal
  • Scott Swaaley, MAKESafe Power Tool Brake
  • Greg Wawrzyniak, Super Dooper Cord Looper
  • Chris Wzysoczanski, T-Shots – Disposable Reactive Target
  • Ruth Young-Loaeza for her hybrid sheet collection

  The First Prize of $1000 was won by Phillip Perez for his Impact Tool shovel. Second place was Ruth Young-Loaeza for her hybrid sheet collection, and third place was Eric Robinson for his Green Launch orbital launch service.

At the end of the meeting, SDIF Chairman Adrian Pelkus said “good-bye” to attendees after 13 years of leading the group.  He said, “I’ve been privileged to meet hundreds of my fellow inventors over the years and mentored so many here in San Diego.  I’ve been delighted to see many of your ideas get to market and honored to have assisted some of you along the way.  I am indeed sad to leave the local community. My plans are to accomplish a lot more for mankind and the environment by working on my large backlog of such projects.

I am especially proud to have play a part in bringing together over 40 inventor clubs around the county into the newly formed organization of inventor club leaders and to have been part of our first meeting with Andrei Iancu, the new director of the USPTO, and participate in meetings with Congressional Representatives in Washington, D. C. to educate them about how the America Invents Act and PTABs are hurting inventors.”

He added, “Thanks to my dear friends that helped me keep SDIF going all these years. Especial thanks to long-time supporters and fellow board members:  Leslie Wagner, David Waller, Sidney Wildesmith, Ben Gage, Judith Balian, Jennifer Joe, and Michele Nash-Hoff.”

Several of the above, including me, gave heartfelt testimonials to Adrian for his brilliant leadership of the group for these many years and wished him continued success with his own inventions.

Adrian announced that he was also dropping off the board of directors for U. S. Inventors and the United Inventors of America, but he urged everyone to continue to support patent reform.  He reminded everyone that we need strong intellectual property laws to defend their innovations.  He said, “The patent laws have become so weak that the independent inventor can no longer count on an issued patent to protect his right to profit from the labors of their mind. This strikes at the heart of what our founding fathers knew was the way to make the country great and made a foundation Article in the US constitution. We American Independent Inventors must stand and demand our rights be restored. Our nation needs us to create the new ideas and subsequent new jobs to continue to grow and thrive. The present patent laws must be revised to bring back the confidence a patent brings to both the inventor and investor.”

He encouraged everyone to see the movie Invalidated: The Shredding of the US Patent System, if they didn’t attend the SDIF viewing in August. The movie raises public awareness of the problems inventors are having with the patent system. (Note: You can also see the documentary on Amazon, free with Amazon Prime subscription, or $2 otherwise.)

In this session of Congress, there have been bills introduced to the House of Representatives and Senate to protect inventors’ patent rights, such as the STRONGER Patents Act 2017 (S. 1390), introduced by Senator Christopher A Coons  (D-DE), and the Inventor Protection Act  (H. R. 6557), sponsored by Rep. Dana Rohrabacher (R-CA). The most comprehensive BILL is the Restoring American Leadership in Innovation Act of 2018 (H.R. 6264)introduced by Congressman Thomas Massie (R-KY), an award-winning inventor and successful entrepreneur himself. It is co-sponsored by Congresswoman Marcy Kaptur (D-OH) and Congressman Dana Rohrabacher (R-CA). Its goal is to roll back some of the “worst parts” of the America Invents Act of 2011 and reverts patents back to first to invent, not the first inventor to file. All three bills are stuck in the Judiciary Committee.

I encourage you to contact your Congressional Representative to urge them to become a co-sponsor of one or all of the bills mentioned above. These bills must not languish in committee for the rest of this session.  We must pass legislation to restore our once great American patent system that was the envy of the world. Right now, inventors in China have more protection for their patents than inventors in the U.S.  We cannot let China become the innovation leader of the world.

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How could we stop Chinese Investors from Buying U. S. Companies?

Wednesday, April 11th, 2018

After my article, “Should We Allow the Chinese to Buy Any U.S. Company They Want?” was published January 9th, I was made aware that AXIOS published an article by Steve LeVine on January 10th that provided data from MacroPolo showing that the amount of Chinese investment in the U.S is far greater and more dangerous that I thought.

He wrote, “Chinese investors and firms own a majority of almost 2,400 American companies employing 114,000 people, about the same number as the combined U.S. staffs of Google, Facebook and Tesla…”

On their website, MacroPolo is described as “an initiative of the in-house think tank of the Paulson Institute at the University of Chicago,” which “has a dedicated team of experienced observers and seasoned analysts” whose “aim is to decode China’s economic arrival …across multiple dimensions.”

The article featured MacroPolo’s interactive map, which shows the economic impact of Chinese investment in each state by economic contribution, number of firms owned, and total employment of these firms. The map “appears to be the first open-source, county-by-county study of every majority-owned Chinese company in the U.S. — $56 billion worth.”

In 2017, the top three states were:

  • California: $12.3 billion – economic contribution, 19,300 employed, 598 firms
  • Michigan: $7.6 billion economic contribution 15,200 employed, 111 firms
  • New York: $3.1 billion economic contribution, 6,300 employed, 198 firms

Kentucky was the top state in 2016 with the $5.4 billion buyout of GE Appliances in Louisville by Haier.  I was horrified when this happened because I had used GE’s reshoring of a water heater as the headline case study in my reshoring presentations, and I had visited the GE new product design center in Louisville in the fall of 2015. I had been delighted to see one appliance after another being reshored.

The most immediate way that we could reduce Chinese investment in the U. S. would be to pass the legislation I mentioned in my previous article:  The Foreign Investment Risk Review Modernization Act (FIRRMA), introduced on November 8, 2017 by Congressman Pittenger (H.R.4311) and Senator Cornyn (S. 2098).  The key features of these bills are:

  • “Expands CFIUS jurisdiction to include joint ventures, minority position investments, and real estate transactions near military bases and other sensitive national security facilities.
  • Updates CFIUS definition of “critical technologies” to include emerging technologies that could be essential for maintaining the U.S. technological advantage over countries that pose threats.
  • Adds new national security factors to the review process.
  • Strengthens the government’s ability to protect American “critical infrastructure” from foreign government disruption.”
  • Representatives Devin Nunes (CA-22), Chris Smith (NJ-04), Denny Heck (WA-10), Dave Loebsack (IA-02), Sam Johnson (TX-03), and John Culberson (TX-07) are co-sponsors of H.R. 4311.

In his press release, Senator Cornyn said, “By exploiting gaps in the existing CFIUS review process, potential adversaries, such as China, have been effectively degrading our country’s military technological edge by acquiring, and otherwise investing in, U.S. companies…This undermines our national security and highlights the imperative of modernizing the CFIUS review process to address 21st century threats. This bill takes a measured approach by providing long overdue reforms to better protect our country, while also working to ensure that beneficial foreign investment is not chilled.”

Senators Burr (R-VA), Feinstein (D-CA), Marco Rubio (R-FL), Amy Klobuchar (D-MN), John Barrasso (R-WY), Gary Peters (D-MI), James Lankford (R-OK), Joe Manchin (D-WV), and Tim Scott (R-SC) are also co-sponsors of S. 2098.

The introduction of FIRRMA may be the outcome of the recommendations of the draft annual report of the U.S.-China Economic and Security Review Commission  “calling for a ban of the commission’s annual Chinese state-owned enterprises’ purchases of U.S. companies…The Commission recommends Congress amend the statute authorizing the Committee on Foreign Investment in the United States to bar Chinese state-owned enterprises from acquiring or otherwise gaining effective control of U.S. companies…” as reported by Ali Meyer on October 27, 2016 in the Washington Free Beacon.

The first independent review of these 79-page bills was published December 21, 2017 in the Latham & Watkins Client Alert White Paper titled, “CFIUS Reconstructed: The Foreign Investment Risk Review Modernization Act of 2017.” The White Paper states, in part:

“The proposed Foreign Investment Risk Review Modernization Act would bring substantial changes to CFIUS review. Key Points are:

  • FIRRMA could speed review of certain transactions
  • It would provide for increased scrutiny of transactions from countries of concern.
  • It would expand the scope of activities subject to CFIUS review

FIRRMA would also lengthen the CFIUS review process, extending the initial review period from 30 to 45 days, and allowing CFIUS to extend a national security investigation for 30 days beyond the existing 45-day period where “extraordinary circumstances” require. Thus, the post-notice CFIUS clock would expand from 75 days currently to either 90 or 120 days from the time of filing to the end of the national security investigation.

…But FIRRMA would also increase the resources CFIUS would have to undertake its expanded responsibilities.… In a number of important ways FIRRMA would clarify, alter, or expand current CFIUS practices. And yet, the 79-page bill leaves open certain questions, and raises still others.”

The White paper also stated that “an alternative bill was introduced into the Senate, the “United States Foreign Investment Review Act of 2017 (S.1983),” also with bipartisan sponsorship (Sens. Sherrod Brown (D-Ohio) and Charles Grassley(R-Iowa). That said, FIRRMA’s bicameral introduction and bipartisan support, which includes Senator Diane Feinstein (D-California), as well as reports that some of FIRRMA’s sponsors worked with the Administration on the bill before it was introduced, all provide some reason to expect a version of FIRRMA to move during upcoming months.”

On December 11, 2017, Alexandra Kilroy wrote a guest blog for Adam Segal on the Council on Foreign Relations website. Alexandra is an intern in the Digital and Cyberspace Policy program at the Council on Foreign Relations. She wrote, “As Chinese firms pour funds into promising Silicon Valley start-ups, many national security experts are concerned that China may soon surpass the United States as a technological power, in part though investing in U.S. firms and acquiring cutting-edge technology.”

She commented that “the Foreign Investment Risk Review Modernization Act (FIRMMA), … appears to be motivated in part by an unreleased Pentagon report of the military applications of Chinese investments in the United States. Under the new legislation, CFIUS oversight would be expanded to include foreign investments near military facilities, minor-share investments in critical technology and infrastructure sectors, and transfers of dual-use technology to foreign entities. Acquisitions of critical technologies by “countries of special concern” would also be subject to CFIUS oversight.”

She commented that “Chinese state-led capitalism makes it difficult to distinguish between private and state-owned businesses, and many private firms have strong ties to the Chinese government. In addition, China has been historically disinclined to allow private foreign investment in many critical parts of the economy…it has traditionally maintained strict limits on foreign investment in its energy, transportation, and technology industries. Chinese firms, many with connections to the state, can invest billions in U.S. technology, but U.S. companies are often barred from doing the same.”

As a director on the board of the San Diego Inventors Forum, it greatly concerns me that Chinese investors are buying startup companies whose new technologies may be critical to the future of American technological advances.  Under the current law, Chinese investors could be buying small emerging companies that have advanced technologies that are down at the Tier 3 and 4 levels in the supply chain and never get brought up for a CIFIUS review of the acquisition.

In this regard, there are two possible scenarios that frighten me: (1) Chinese investors buying an advanced technology company and shutting it down to keep the U. S. from benefitting from the technology, and (2) having Chinese engineers insert “backdoor” technology into the product to make it not work properly or quit working when triggered remotely. The latter is already a problem with counterfeit Chinese parts in the defense and military supply chain.

On January 22, 2018, Daniel DiMicco, Chairman, and Michael Stumo, CEO, of the Coalition for a Prosperous America sent letters to Congressman Robert Pittenger and Senator John Cornyn, which said, in part:

“The Coalition for a Prosperous America (CPA) board of directors has voted to support the Foreign Investment Risk Review Modernization Act of 2017 (FIRRMA) which you introduced on November 8, 2017 with bipartisan support.

We appreciate your recognition that foreign investment should be more tightly monitored to address new security threats posed by an evolving global landscape. Your bill appropriately expands CFIUS’s authority to review certain transactions that pose national security concerns, expands the list of factors to be considered by CFIUS and mandates disclosures by state-owned enterprises.

We agree with your reasons, and those of your cosponsors, for advancing this bill. We would additionally point out that trade is part of China’s multidisciplinary strategy to surpass the US on the global stage. China engineers persistent trade surpluses. Our corresponding deficits require us to be a net importer of capital. We sell our assets to balance the books as they sell more goods than they buy. Thus, the greater the US trade deficit, the more we sell our assets and the more we must monitor and restrict which assets are sold.

CPA believes your bill could be improved by adding economic security as a basis for rejecting investment. As an example, Canadian laws restricting investment go beyond national to economic security, i.e. net gain to the domestic economy, when buyers are state-influenced companies.”

The expansion of CIFIUS by FIRRMA may not be enough to stop the dangerous level of Chinese investment in the U.S.  Another solution would be to require reciprocity between China and the U.S. with regard to investment.  Currently, U. S. companies are not allowed to buy 100% of any Chinese company.

On January 17, 2018, CPA’s Trade Blog included an excerpt from Jenny Leonard’s article on Inside US Trade, which stated, “The White House is considering the creation of a reciprocal investment regime with China following a Section 301 [Trade act of 1974] investigation into Chinese technology and intellectual property policies…The sources said the administration, if it went that route, would apply the 1977 International Emergency Economic Powers Act, which gives the president broad authority to regulate commerce “to deal with an unusual and extraordinary threat with respect to which a national emergency has been declared for purposes of this chapter and may not be exercised for any other purpose.”

The article describes how it could be done: “Trump, they said, would sign an executive order declaring a national emergency and, as required under the statute, “immediately” transmit a report to Congress specifying the rationale behind the emergency and actions, and naming “any foreign countries with respect to which such actions are to be taken and why such actions are to be taken with respect to those countries.”

The result “would be to restrict Chinese foreign investment in the U.S. to the extent that Beijing restricts U.S. foreign investment in its market, which could effectively lead to sectoral investment bans. Chinese investors under the new regime would have to demonstrate that China allows U.S. investment in a specific sector. For example, one source said, if Chinese investors wanted to buy a U.S. bank, they would be able to acquire no more than a 49 percent stake — in line with Chinese rules on foreign ownership of banks in China.”

Personally, I like this latter solution the best as there is still too much possibility that a Chinese acquisition may escape the expanded CIFIUS “radar screen” for a review. It’s not just our national security that is being threatened, it’s our economic security as well.

 

Threat to the American Patent System and Inventors’ Rights

Tuesday, October 10th, 2017

On August 11, 2017, a group of inventors went to the United States Patent Office to make a statement and give testimony against new patent laws that promote the theft of our intellectual property instead of protecting it. Afterward, the inventors demonstrated in front of the Patent Office, and several burned their patents.  Michael Caputo, Managing Director of Zeppelin Communications, stated, “Patents have become worthless.”  The C-Span video of the protest can be viewed here.

Why is the American patent system and inventors’ rights being threatened?  In September 2011, Congress passed and the president signed the Leahy-Smith America Invents Act (AIA) that changed the U.S. patent system to the party “first to file” instead of the “first to invent to bring the U.S. in line with other countries who adopted first to file patent systems years ago, supposedly to simplify the patent process for companies that file applications in multiple countries. Its central provisions went into effect on September 16, 2012 and on March 16, 2013.

At the time, supporters said it would improve patent quality by creating a new process for reviewing patents after they have been issued and allow third parties to provide information on other parties’ applications.

Opponents argued that there was no reason to change the U.S. system, and inventors and small businesses complained that switching to a “first to file” system would give large companies an advantage and hurt individual inventors.

To find out what has happened to the American Patent System and Inventors’ Rights since 2011, I requested information from Randy Landreneau, Founder Independent Inventors of America, Paul Morinville, Founder US Inventor, and Adrian Pelkus, President of San Diego Inventors Forum.

Randy Landreneau: “America has been the most innovative country on earth from the start. A key reason for this is the revolutionary patent system created by our Founders that provided intellectual property rights to any man or woman, rich or poor. The rest of the world had systems that were for the aristocracy and those favored by the powerful…America maintained a superior system in protecting the intellectual property rights of inventors until …the passage of The America Invents Act in 2011…While it is hard to quantify the effect of changing to First-to-File, this change does place a disadvantage on the independent inventor relative to the large corporation. But another change has had very measurable negative effects.

The America Invents Act created new and easier ways to invalidate an existing patent. Prior to this, to invalidate a patent required going to a judicial court with its various protections offered to the holder of a property right. The America Invents Act created procedures for an administrative court, the PTAB (Patent Trial and Appeals Board), that does not have the same protections. Approximately 70% of the patents that companies try to invalidate using the PTAB get invalidated.

There are efforts underway to get the PTAB procedures ruled unconstitutional or at least reigned in and similar to the procedures of a Judicial court. Certainly, the PTAB procedures are doing great harm to American innovation.”

A more recent bill was even worse – The Innovation Act (H.R. 9), which passed the House in December of 2013. But, the Senate version (PATENT Act, S.1137) was fought effectively and did not pass the Senate.  However, these bills were reintroduced in subsequent sessions of Congress until the summer of 2016, when it became clear these bills were not moving forward.

Hundreds of millions of dollars have been spent pushing a false narrative that nefarious entities called “patent trolls” are using frivolous litigation to make companies pay them unfairly. More often, in actuality, an inventor has a patent that is being infringed by large corporation that he cannot afford to fight in court. So, he sells his patent to a company that does have the wherewithal to fight in court (a non-practicing entity or NPE), and the infringer loses because he is guilty.

One element of the Innovation Act was ‘Loser Pays.’ If an inventor sues a corporation for patent infringement and does not win, he could be liable for the infringer’s legal costs. This could be more than $5,000,000. This liability would also be a personal liability to an investor with an interest in the patent (piercing the corporate veil and placing personal assets at risk).

There are still efforts underway by multinational corporations to get a similar bill passed in the future. Currently, there is the threat that something similar to the Innovation Act will come back.

But, the more current threat is how the courts have been moving toward not considering a patent as the property right that it has been for 200 years. A three-judge panel actually ruled that a patent is a public right. If the courts start to widely regard patents as not being property rights, as some feel they are already doing, this will greatly harm American innovation. If a court does not respect the rights of an inventor, court procedures end up being applied in ways that work against him. Recently, there have been numerous cases where judges ruled that a patent was too abstract, and the inventor was not given the normal due process of providing witnesses, testimony, or otherwise fighting to retain his intellectual property.

There is an effort underway to get the U. S. Supreme Court to take up this issue and rule in the favor of patents being property rights. If this effort succeeds, we will have, at least temporarily, stopped the erosion of inventor rights that are so important to this great nation. I and others are involved in fighting to maintain the rights of inventors, and to expand them where they have been reduced in recent years.”

Paul Morinville wrote his opinion in a paper titled, “We’ve Been Googled,” when H.R. 9 looked like it would pass in which he stated that “H.R.9 creates a Patent System without Inventors. Over the last decade, Google and others have spent hundreds of millions of dollars to lobby Congress and produce an ingenious ‘patent troll’ narrative, which distorts the reality of invention in America. In this decade long war on inventors, H.R.9 is the Google lobby’s latest accomplishment. Not surprisingly, H.R.9 is not directed to fixing the fictional problem of ‘patent trolls.’ Instead, H.R.9 mounts its considerable damage on the patent system in general, specifically harming inventors and small patent-based businesses.”

Morinville explained, “If this bill becomes law, inventors will not be able to enforce their patent rights against moneyed corporations like Google. However, moneyed corporations like Google will still be able to enforce their patents against small businesses with even more devastating consequences to those small businesses. Patent litigation is about risk and cost versus reward. If risk or cost is too high in relation to reward, a patent cannot be enforced.”

Adrian Pelkus: “I’m an inventor named on 14 issued patents and have made my life as a serial entrepreneur doing new product development for over 30 years. Along the way I have created many startups and raised millions of dollars on the back of IP. I have coached inventors and startups every Thursday since 1985 and have run one of the larger inventor clubs in the U. S. since 2005, the San Diego Inventors Forum (www.sdinventors.org.)

He said, “What is most absurd about the America Invents Act to American inventors is the fact that with PTABs we can lose our ISSUED PATENTS… A company challenging a patent wins 90% of the time. The cost to defend is so expensive that inventors give up and are unable to afford achieving their dreams.”

Now, issued patents guaranteed as a Property Right in the constitution are being challenged. A business that infringes would just pay a royalty to the inventor if found guilty hence ‘efficient infringement.’ The biggest incentives to create new ideas and businesses are weakened because the guarantee that an issued patent will protect your IP interests and investments is gone. Patents can now become liabilities. The proposed bills to penalize an inventor with loser pays and threatens to make their investors pay was beyond absurd; it would be economic and intellectual suicide. The end of our rights and hopes as inventors is in plain sight.”

Adrian became connected to Randy Landreneau and Paul Morinville when they reached out to other inventor groups, and he was invited to join the fly-in to Washington, D.C. to fight H.R.9 in April 2015. After that fly-in to Washington, D.C. he became focused on fighting against bills that would destroy our patent system and joined the board of US Inventor in August 2016. He was already on the board of the United Inventors Association and had been working to unite the inventor clubs and groups nationwide.

In January, 2017, the Policy Panel of US Inventors authored a USI Policy Section 101 paper and in February, it was determined that they had to “get as many inventors as possible calling Congress and writing about the threat of a new bill.” 

Adrian said, “I sent out my first call to action to all the clubs and sent a second one the next week and every week since. I discussed the plan to unite the groups and clubs with Stephen Key of Invent Right and Louis Foreman of Edison Nation, who asked how they could help. With their help, we have united 24 inventor groups nationwide to fight the threat to our American patent system and protect inventors’ rights.

I established a bimonthly phone conference with the heads of the biggest organizations in the inventor community, inventor clubs, and individual inventors in an effort to create a coalition that would support a petition that reflects our concerns about and suggestions to change the America Invents Act. This coalition is a historic cooperation that will unite the inventor community and bring a voice to Washington, D.C. they need to hear!

We now have a petition that we believe will help make America great again by making it a great place for American Inventors again. This petition represents concerned citizens, inventors, entrepreneurs, and businesses from coast to coast. I’m proud to contribute my efforts to help America by restoring its patent system. 

I agree with Landreneau, Morinville, and Pelkus that the America Invents Act is gradually destroying the American Patent System. If a bill similar to H. R. 9 passes Congress, it would the final nail in its coffin.

Why is this important? Because most new technologies, especially break-through or disruptive technologies, come from individual inventors who either start a company or license their technology to companies that are more able to take them to the market.

As a mentor for San Diego’s CONNECT Springboard accelerator program and fellow director on the board of the San Diego Inventors Forum with Adrian Pelkus, I work with inventors designing new products or break-through technologies. Local inventors have the opportunity to compete in the San Diego Inventors Forum annual invention contest for best new consumer product or best new technology. All contestants must have applied for at least a Provisional patent before they can participate. The future success of their product or technology is contingent upon their having a patent they can protect from infringement. Their ability to raise the financial investment they need to bring their product to the marketplace depends upon their being able to protect their patent. No investor will take the risk of investing in a product or technology that cannot be protected.

Please join the American inventors coalition formed by Adrian Pelkus, Randy Landreneau, Paul Morinville, and others to save American inventors by signing the petition at http://www.usinventor.org/petition.