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Inventors Need Your Help to Protect Their Patent Rights

Tuesday, October 8th, 2024

US Inventor was founded in 2015 after the passage of the America Invents Act of 2011  and the establishment of the Patent Trial and Appeal Board (PTAB) to “restore a solid patent system that ensures small businesses and individual inventors can protect their inventions from theft, regardless of the power and influence of large corporations. Every initiative and action undertaken by US Inventor aims to restore and reinforce the integrity of the American patent system.” US Inventor is the only organization representing small inventors, businesses, and startups to enact change that supports these groups, and it has grown to about 87,000 members over the past couple of years.  If you haven’t already signed the Inventor’s Rights Resolution, you may sign here.

In the past several weeks, US Inventor has been active in opposing two Senate bills that were scheduled for “mark up” by the Judiciary Committee during one of the three committee meetings scheduled in September. The bills are:

S. 2140: Patent Eligibility Restoration Act of 2023 (PERA)

S.2220 – PREVAIL Act

Both bills were introduced during the current Congress in 2023, and I wrote about these bills in a previous blog article, summarizing the reasons why US Inventor is opposed to each bill.  Briefly, US Inventor stated: “PERA must not become law without complete removal of Section 3(b)(1)(B)(i) and (ii) and its support at Section 2(5)(D)(v) and Section 2(5)(E)(i) and (ii).” The full analysis of PERA by US Inventor can be reviewed here.

US Inventor’s position on PREVAIL is that it “could be saved if it had an amendment that “offers inventors the “choice” of not being forced into the unjust PTAB administrative court, but rather being able to choose to face your infringer in a real court with a jury and Due Process.” The full analysis of PREVAIL by US Inventor can be reviewed here.

During the month of September, thousands of USI members called and wrote their Senator expressing their opposition to both bills.  US Inventor also arranged Zoom meetings with staff of the Senators who are members of the Judiciary Committee.  I participated with other California constituents who are inventors in Zoom meetings with the staff of California Senators Butler and Padilla.

When it was my turn to speak, I said that I was a board member of the San Diego Inventors Forum, which is one of the oldest and largest inventor groups in the country with a database of over 600 inventors, entrepreneurs, and service providers. We have noticed that the threat of having the Patent Review and Trial Board (PTAB) invalidate a patent is discouraging inventors from applying for a patent, and they are going to other countries to get their patents. Even China has a more secure patent system, so inventors are giving their technologies to China when they get a patent there. 

It is also causing more inventors to focus on getting licensing agreements instead of starting companies.  The danger is that the some of the large corporations they approach for a licensing agreement steal the technology and dare the inventor to sue them for infringement because they know the case will be handled by PTAB where the inventor’s patent will be invalidated. In addition, the lack of secure patent rights is also hindering the willingness of angel investors to invest in new technologies for startup companies. 

US Inventor held their second annual conference, From Dreamers to Decision-Makers, on September 26th-28th in Washington, D.C. where several inventors shared their stories of having their patents infringed and then invalidated by the PTAB.  The bills mentioned above were discussed in detail during the conference as well as the two new bills introduced last spring:

HR 8134, the Restoring America’s Leadership in Innovation Act (RALIA), introduced by Rep. Thomas Massie (R-KY) and Rep. Marcy Kaptur (D-OH)

HR 8132, the Balancing Incentives Act (BIA) introduced by rep. Marcy Kaptur (D-OH) and Rep. Thomas Massie (R-KY)

Attendees had been encouraged to come a day early to visit the offices of their Senators to express their opinions on patent legislation.  Many were able to make arrangements to meet with the staff of their Senators and express their opinions about the bills.  That same day, Dirk Tomsin of US Inventor hand delivered 7,350 letters to their Senator’s offices, along with petitions signed by over 4,500 signatories.

It appears that as a result of these efforts, the bills were not considered by the Judiciary committee for “mark up” during any of their September meetings. Congress is now in recess until after the election. However, the danger is that Congress will be in session for five weeks before the end of this session of Congress, so these bills could still be scheduled for “mark up” during that brief session.   

 The Senators comprising the Judiciary Committee are:

Chairman, Dick Durbin (D-IL)

Ranking member, Lindsey Graham (R-SC)

Majority Members

Sheldon Whitehouse (D-RI)

Amy Klobuchar (D-MN)

Chris Coons (D-DE)

Richard Blumenthal (D-CT)

Mazie Hirono (D-HI)

Cory Booker (D-NJ)

Jon Ossoff (D-GA)

Alex Padilla (D-CA)

Peter Welch (D-VT)

Laphonza Butler (D-CA)

Minority Members

Chuck Grassley (R-IA)

John Cornyn (R-TX)

Mike Lee (R-UT)

Ted Cruz (R-TX)

Josh Hawley (R-MO)

Tom Cotton (R-AR)

John Kennedy (R-LA)

Thom Tillis (R-NC)

Marsha Blackburn (R-TN)

Suppose any of the above Senators are your Senators. In that case, I urge you to contact their offices and express your opposition to PERA and PREVAIL unless PREVAIL is amended as suggested above. You can call the U.S. House switchboard at (202) 224-3121 to connect to your Senator’s office.

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New Patent Reform Legislation Would Protect Inventors’ Rights

Tuesday, May 21st, 2024

Two new bills have been introduced in Congress that would restore our broken patent system. These bills aim to address longstanding issues with the patent system and ensure fair treatment for inventors and small businesses.

Ever since the America Invents Act of 2011 was passed by Congress, our patent system was changed from being the best in the world to one that has nearly destroyed inventors’ rights.

Today, inventors suffer massive predatory infringement by large multinational corporations, including Chinese controlled multinationals, have their patents declared ineligible for patent protection because of being considered an “abstract idea,” and are denied their day in court to sue patent infringers.  This is stifling the innovation engine of the United States.

 During the 116th (2019-2020) and 117th Congress (2021-2022), several bills were introduced with the purported purpose of restoring inventors’ rights and fixing some of the problems generated by the America Invents Act of 2011. None of these bills made it out of committee for a vote by the House or Senate.

Two bills were introduced last year into the current Congress (118th 2023-2024):

  • S. 2140: Patent Eligibility Restoration Act of 2023 (PERA) was introduced by Senators Thomas Tillis (R-NC) and Christopher Coons (D-DE) on 6/22/2023
  • S.2220 – PREVAIL Act introduced by Senator Chris Coons (D-DE) on 7/10/2023

Neither of these bills have made it out of committee as yet for a vote by Congress, but that is good news as neither bill sufficiently restores inventors’ rights.

The two new bills are HR 8134, the Restoring America’s Leadership in Innovation Act (RALIA), introduced by Rep. Thomas Massie (R-KY) and Rep. Marcy Kaptur (D-OH) on 4/16/2024 and HR8132,  the Balancing Incentives Act (BIA) introduced by rep. Marcy Kaptur (D-OH) and Rep. Thomas Massie (R-KY) also on 4/16/2024.

RALIA seeks to revitalize patent protection by restoring injunctive relief, eliminating confusing judicially created eligibility tests, and abolishing the Patent Trial and Appeal Board (PTAB). By strengthening patent rights and encouraging innovation across critical technology fields, RALIA will help restore America’s leadership in innovation.

RALIA Reverses the effects of several Supreme Court decisions and of the America Invents Act, largely repairing most of the erosion of US patent rights accumulated over the last several decades. Full details below.

I participated in the weekly conference call with US Inventors members on May 8, 2024 when founder Paul Morinville highlighted some of the key things RALIA would do:

  • “Repeal ‘first to file’ and restore ‘first to invent’ as the criterion for granting a patent
  • Abolish the Patent Trial and Review Board (PTAB)
  • Restore the means of defending a patented invention against infringers: in court.
  • Restores injunctive relief to stop infringers from making and marketing the product being infringed
  • Declares that patents are private property
  • Abolishes inter partes review and post-grant validity proceedings
  • Prohibits publishing patents until issued
  • Eliminates fee diversion from the U.S. Patent Office to the General Fund
  • Fixes the problems with abstract ideas, medical diagnostics, and gene therapy”

He also said that The Balancing Incentives Act (BIA) aims to restore balance to our patent system and promote innovation. “BIA addresses issues with the PTAB, ensuring inventors receive fair treatment and protection of their intellectual property rights. BIA requires the patent owner’s consent for a PTAB review. By adding this fundamental right, the Bill aims to realign the PTAB with its original purpose as an alternative to federal court proceedings and a fair venue for all parties involved, rather than a mechanism incentivized for patent invalidation.”

Congresswoman Kaptur posted a paper, titled “At-A-Glance: Balancing Incentives Act & Restoring America’s Leadership in Innovation Act” that goes into more detail of why these bills are needed and what they would do.

The paper states:

“American innovation is falling behind the rest of the world. In 2018 patents filed per capita fell behind China for the first time since data was first collected in 1980. Much of that is because protections for American inventors is slipping. The time, money, and energy invested in creating an invention that can be marketed and sold or used to create and sell a new product is not worth it if the invention can be easily taken away. Originally, patents were tried in court. In 2011 the Patent Trial and Appeal Board was formed, and cases that challenge patents have since been deferred to that board. In FY23, PTAB completely invalidated 28% (see slide 11) of patents put before them; another 38% settled, were partly invalidated, came to mixed outcomes, or ended in a request for adverse judgement. Only 27% of cases were denied or dismissed, and only 7% determined to be all patentable. For solely those cases in which a written decision was reached, only 17.1% of patent claims were fully upheld – an 82.9% full or partial invalidation rate. (Fully invalidated: 67.5%, partly invalidated 15.4%.”

The paper also describes what a few specific provisions of the bill would do:

  • “Remedy eBay v. MercExchange:
  • Reverse the US Supreme Court’s ruling in Oil States v. Greene’s Energy Group:
  • Restore the pre-America Invents Act one-year grace period.
  • Limit the consideration of information disclosed to the PTO as ‘prior art.’
  • Restore the requirement of naming the best mode or preferred embodiment in a patent application.
  • Remedy adverse effects from Bilski v. Kappos, Association for Molecular Pathology v. Myriad Genetics, Mayo Collaborative Services v. Prometheus Laboratories, and Alice Corp. v. CLS Bank:
  • Restore and clarify patentability of certain scientific discoveries and software inventions.
  • Ensure judicial review and the right to de novo judicial review for patent validity determinations.
  • Remedy Impression Products v. Lexmark International:
  • Clarify property rights in the transferability of patents, including by licensing.
  • Strengthen the presumption that an issued patent is valid and protect patents against claims of invalidity, rather than the other way around”

The paper describes what the Balancing Incentives Act (BIA) would do:

“BIA would not abolish the PTAB as the Restoring America’s Leadership in Innovation Act (“RALIA,” below) would, but instead effectively give patent owners the option to have their patents challenged either in court or at the PTAB. (Relevant USC is amended: “The owner of the patent consents to the filing of the petition.” – Referring to a petition to have a case heard at the PTAB rather than in court.) This will naturally encourage PTAB to demonstrate its legitimacy without micromanaging USPTO or the PTAB. Patent owners will choose to continue to work with PTAB so long as they view it as fair and legitimate. This bill is compatible with RALIA (for which we also advocate sign-on) in that it presents a method to balance the PTAB’s authority with court authority while leaving all other provisions in RALIA untouched.”

On March 12,2024, James Edwards, Executive Director of Conservatives for Property Rights wrote a letter to Rep. Thomas Massie and rep. Marcy Kaptur expressing their support for HR 8134 (RALIA) because of the following:

“The Restoring America’s Leadership in Innovation Act would strengthen private property rights in one’s inventions and discoveries. The bill would broadly reverse the antipatent onslaught of recent years. RALIA would counter the ongoing assault by courts, Congress, the Administrative State, and patent-infringer special interests. The harm done to our patent system is reflected in the fact that global venture capital (VC) invested in the United States has fallen. The U.S. share of VC dropped from 82% in 2004 to 49% in 2021 as the Supreme Court’s eBay ruling spares patent infringers from injunction, the Alice-Mayo framework causes patent-eligible unpredictability, and enactment of the America Invents Act’s (AIA) led to infringers’ greater ability to cancel issued patents, game the litigation system, and disrupt commercialization of inventions. Also, patent licensing royalty rates have dropped over the same period.

In short, our patent system desperately needs the restoration of its traditional strengths…”

This letter was cosigned by the leaders of U.S. business & Industry Council, Tradition, Family, Property Inc., Les Government, Let Freedom Ring, AMAC Action, American for Limited Government, Taxpayers Protection Alliance, 60 Plus Association, Family PAC Federal, Tea Party Patriots Action, The Committee for Justice.

We need your help to enact critical patent reform legislation that will protect inventors’ rights and promote American innovation. As a member of US Inventor and Secretary of the board of the San Diego Inventors Forum, I understand the importance of safeguarding intellectual property and fostering an environment where inventors can thrive. We are calling on you to take action today by contacting your Congressional Representative and asking them to sign on as a co-sponsor and support both HR 8134, the Restoring America’s Leadership in Innovation Act (RALIA), and HR8132, the Balancing Incentives Act (BIA).

If you don’t how who your Congressional Representative is, you can find who he/she is using your zip code at this link. Then, you can call the U.S. House switchboard at (202) 224-3121 to get connected to the office of your Representative.  

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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.  

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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.”

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Inventors’ Rights Must Be Restored

Tuesday, January 11th, 2022

Ever since the Leahy–Smith America Invents Act (AIA) was passed in 2011, there have been bills introduced in Congress with the purported purpose of restoring inventors’ rights and fixing some of the problems generated by that Act. 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.

Besides changing our patent system from a “first to invent” to a “first to file,” the America Invents Act also created the Patent Trial and Review Board (PTAB) that has nearly destroyed inventors’ rights.  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.”

In the 117th Congress, three new bills have been introduced with the purported purpose of again fixing the problems. These bills are:

HR 5902, The Clear Patents Act, introduced by Representative Darrell Issa (R-CA) on 11/05/21 to the House. The stated purpose is “To amend title 35, United States Code, to clarify the relation of Inter Partes Review proceedings and Post-Grant Review proceedings to other administrative proceedings, and for other purposes.” Since Rep. Issa was an original co-sponsor of the America Invents Act, bills related to patents that he introduces are not beneficial to inventors. This bill would amend Section 315, by adding at the end the following:

“(f) Relation to other administrative proceedings

If the Director institutes an inter partes review of a patent, any proceeding before a Federal agency (as that term is defined in section 201) that would be materially affected by one or more of the claims of the patent being cancelled under such review shall be stayed until a final written decision by the Board is issued under such review or such review is otherwise terminated. “

As an example of this type of action, U S Inventors commented, “The ITC can be effectively used to stop infringing products from coming into America. Issa’s bill allows any ITC action underway to be stopped if a PTAB action is instituted, and only continued after the PTAB action is concluded (if the patent remains intact).”

S. 2891, The Restoring the America Invents Act, introduced by Senators John Cornyn and Patrick Leahy into the Senate on September 29 2021. After the introduction, Sen. Mike Crapo  (R-ID), Sen. Amy Klobuchar (D-MN), Sen. Richard Blumenthal (D-CT), and Sen. James Risch, (R-ID)  have signed on as co-sponsors. This bill would also “amend title 35, United States Code, to address matters relating to the Patent Trial and Appeal Board of the United States Patent and Trademark Office, and for other purposes.” 

This bill is too complicated to quote any of the clauses, but basically it changes many of the procedures and rules of inter partes reviews and PTAB cases.

U S Inventor comments that “Leahy’s new bill greatly expands the grounds available for Big Tech/Big Corp to engage in IPR proceedings against the lesser financed small inventor or startup.”  It would basically strengthen the PTAB – one provision explicitly allows government agencies to use the PTAB to invalidate patents!

It is my opinion that the above bills are bad legislation and would be harmful to inventors’ rights. 

I was a mentor for San Diego’s CONNECT Springboard accelerator program from 2015 – 2018 and am a director on the board of the San Diego Inventors Forum. I work with inventors designing new products or break-through technologies to help them select the best processes and sources for their new products.

Inventors in the San Diego region 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. Inventors must have the assurance that their invention will be protected by a patent because no investor will take the risk of investing in a product or technology that cannot be protected.  

Fortunately, there is one bill that would benefit inventors and restore America’s patent system to what it was before the passage of the America Invents Act.

HR 5874, the “Restoring America’s Leadership in Innovation Act of 2021” (RALIA), was introduced into the House by Representative Thomas Massie on 11/04/2021 and referred to the Committee on the Judiciary. Original cosponsors of RALIA include Rep. Louie Gohmert (R-TX), Rep. Paul Gosar (R-AZ), and Rep. Tom McClintock (R-CA).  Rep. Massie’s Press Release announced “the introduction of patent reform legislation designed to restore to Americans a patent system “as the Constitution of the United States originally envisioned it.”

“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.’ Regrettably, Congress’s 2011 enactment of the Leahy-Smith ‘America Invents Act’ has worked in concert with several Supreme Court decisions to erode this protection’s strength and value.”

“As the Constitution intends, RALIA restores patent protection to inventors by awarding patents on a ‘first to invent’ basis rather than the more recently adopted ‘first to file’ standard,” Congressman Massie continued. “A return to a ‘first to invent’ patent protection system ensures that inventors and the investors who back them can be confident that their innovative work and ideas will be safeguarded. Patents should protect those who innovate, not those who win the race to the patent office.”

U S Inventors supports Congressman Massie’s RALIA legislation, along with “organizations including the American Business Defense Council, American Conservative Union, Americans for Limited Government/Americans for Limited Government Foundation, Conservatives for Property Rights, Eagle Forum Education & Legal Defense Fund, Let Freedom Ring, 60 Plus, the Small Business Technology Council, U.S. Business & Industry Council, U.S. Inventor, and Vote America First.”

I join U S Inventors in urging inventors, entrepreneurs, and anyone concerned about rebuilding American manufacturing to call the Congressional switchboard number, 202-224-3121andask to be connected to their Representative and Senators. Then, tell the office staff that you want your Representative to support and co-sponsor the HR 5874, the “Restoring America’s Leadership in Innovation Act of 2021, because this bill is important for his or her constituents and for America. Tell the staff you are opposed to HR 5902, the “Clear Patents Act,” because it will harm inventors and American innovation by allowing China to continue flooding our market with pirated products. Tell the staff of your Senators that you are opposed to S. 2891,” The Restoring the America Invents Act.” 

Lastly, please sign the Inventor Rights Resolution — together we can help restore patent protection for inventors.

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Adrian Pelkus – An Inventor Devoted to Helping Other Inventors

Tuesday, September 7th, 2021

When my first book, Can American Manufacturing Be Saved? Why We Should and How We can was published in May 2009, I introduced it as a speaker at the Del Mar Electronics & Design Show in San Diego, CA and  displayed it at my company’s booth. One of the persons who stopped by and bought my book was Adrian Pelkus, President of A Squared Technologies, Inc. and leader of a group called the San Diego Inventors Forum.  Adrian invited me to the next meeting of the group and I accepted his invitation. Since June 2009, I have regularly attended SDIF meetings and became a board member when it was formally incorporated in 2014.  Our meetings provide information that helps inventors take a product from design concept, fundraising, producing, and successfully marketing the product. I give an annual presentation titled “How to Select the Right Processes and Sources for Your Product” and we hold annual inventors contest with cash prizes. We haven’t held in-person meetings since the COVID pandemic shutdown started in March 2020, but will start meeting again this fall.

In 2018, Adrian and his wife Amy moved to Lexington, South Carolina so he could devote more time to inventing new products. I keep in touch with them and learned that Adrian couldn’t stay away from helping other inventors. Last August, in the middle of the COVID pandemic, he started the South Carolina Inventors Forum using Zoom.

I recently interviewed Adrian to learn more about SCIF.  Adrian said, “After moving here from San Diego and recovering, I decided to build a new inventor nonprofit organization like we had in San Diego. To build new bridges here, I wanted to know and meet “who is who” in town, so I attended a few business group networking events. I discovered 1 Million Cups, which was developed by the Ewing Marion Kauffman Foundation in 2012.  The name came from the notion that entrepreneurs discover solutions and engage with their communities over a million cups of coffee. 1 Million Cups is a free program designed to educate, engage and inspire entrepreneurs around the country. Through the power of volunteers, 1 Million Cups has grown to more than 160 communities.

He explained, “1 Million Cups works with entrepreneurs, empowering them with the tools and resources to break down barriers that stand in the way of starting and growing their businesses. Mr. Kauffman believed it was a fundamental right for anyone who had a big idea to be able to bring it to life—and we’re here to fulfill that mission.”

I told him I was familiar with the Kauffman Foundation and used their curriculum when I taught high school students how to start their own business as one of the teachers for the Millennium Entrepreneurs after school program in the early 2000s. I also met the people who headed up the 1 Million Cups program in Fargo, ND in 2017 when I was the guest of the North Dakota Economic Development Department to visit manufacturers to write articles.

I asked how he recruited support for SCIF.  Adrian responded. “My decades of trade show and networking meeting experience like at CONNECT taught me to spot the group leaders and that’s how I met Sergio Aparicio, who is Manager of the City of Columbia’s Economic Business Development office. Sergio is also an organizer for the Columbia 1 Million Cups group that was meeting weekly prior to the pandemic at the downtown Richland Library with a 150-seat amphitheater.

He added, “I also met Tom Ledbetter, who is the Associate Vice Provost with the Center for Entrepreneurship and Educational Support at Midlands Technical College. A third organizer I met is Dr. Thaddeus Jones, who is a videographer and producer. I spoke to all of them about the idea of a forming a nonprofit organization with the mission to assist inventors with protecting, developing and commercializing their intellectual property through motivation, education, mentoring, a network of local service providers, and national networking opportunities.

He explained, “The main differentiation from the other organizations in town for high tech and business startups was that SCIF is a grass roots way to build business, encourage entrepreneurship of the everyday citizen at the community level, and the fact that my “curriculum” had been vetted in San Diego over a long period of time. The three of them vetted me and came back eager to assist.

Then, the pandemic came and caused mass business closures everywhere including here in South Carolina. 1 Million Cups stopped meeting, but I decided to go forward and start the SCIF meetings on Zoom. Tom Ledbetter and Dr Jones joined the SCIF Board of Directors. Midlands Technical College helped host and Thaddeus created the videos this first year.”

Adrian said, “I am very grateful Sergio has convinced both the city to support SCIF with a grant and for 1Million Cups to assist our mission as well. 1 Million Cups has secured a new meeting place and in fact hosted our SCIF first Invention Contest in August. At that meeting, I announced that the City of Columbia became our first Gold Sponsor. This contribution is appreciated beyond its monetary amount in that it represents the great connection we have made and how the city supports our SCIF Vision statement:

SCIF will contribute to South Carolina becoming known as an Innovation Hub here in the southeast. Economic development in the South Carolina region depends heavily on entrepreneurship and entrepreneurship depends heavily on creativity and invention. By assisting inventors in leveraging their intellectual property and becoming more entrepreneurial, SCIF will play an important role in furthering South Carolina’s reputation as supporting startups, general creativity, launching quality businesses and creating good paying jobs. SCIF will become a recognized valued partner in South Carolina’s economic re-development.”

I asked about his other networking activities, and he said, “I have busy building connections with GoFundMe and SBA to provide avenues for funding inventors and creative folk from concept to commercialization.  I met Valerie Torstenson, Outreach and Marketing Specialist for the South Carolina District Office of the U.S. Small Business Administration. She helped SCIFsign a Strategic Alliance Memorandum (SAM) that connects us to the SBA for assistance in getting loans for startups. Valerie will participate in our group meetings and share news, instructions and opportunities from the SBA.”

He added, “During my 13 years running the SDIF, I met individually with over 1500 inventors at my office. The method I created to standardize the interview allowed me to determine in one hour if an idea is feasible, already patented or on the market, what progress had been made, whether the goal is to start a company or license, and how the goal may be accomplished. Along with 37 years running my own company, I benefitted from the experience of joining over 300 people in their quest to become successful entrepreneurs. I also pursued over a dozen of my own ventures, and learned that we all had something in common —the need for funds.

With that in mind, I recently spoke with GoFundMe co-founder Andy Ballester and their VIP team about creating a special campaign for finding funds for inventors to test their ideas prior to company launch. They agreed to do a pilot program to assist many struggling inventors and innovators get started. These funds will allow them to search for IP, file patents, and build prototypes to show for raising capital to launch or license. They are working on putting together a fundraiser creation and how to share guide that will help our members. Our alliance with GoFundMe will be awesome for American inventors and innovators just getting started.”

Adrian said, “SCIF also joined the United Inventors Association of America(UIA).  I’ve known Warren Tuttle as Director of the UIA for over a decade and served on the board of the UIA for two years with him. Warren is the author of “Inventor Confidential, the Honest Guide to Profitable Inventing” in which I’m honored to be mentioned. We have been working together to co-create an organization called the UIA-CIO consisting of 20 nonprofit inventor clubs to start that will now be linked coast to coast. We invited Valerie Torstenson to the UIA-CIO inaugural meeting in August to announce our new alliance and was delighted to hear her tell us that she had introduced SCIF to the rest of SBA that day via their internal newsletter.” 

I asked Adrian for his parting thoughts, and he said, “I’ve worked long to protect inventor rights and realize now that it will take a unity of never-before-seen segments of society to restore the patent system to where it was prior to the American Invents Act of 2011.  The pandemic has created a swelling of interest in working from home and starting a business for a living to become entrepreneurs. The “industry” of inventing has long been plagued with get rich schemes and people claiming to be gurus and masters of getting a product to market. People I’ve met spent their life savings and many years being misguided and taken advantage by these invention submission companies, phony marketers, and hype hustlers.  It must stop!  That’s why I am excited about the new collaborations we are establishing with the SBA and crowd funding giant GoFundMe.  They may make entrepreneurial pursuits by inventors and innovators a bit easier and more successful.”

I told Adrian that San Diego Inventors Forum is happy to join the UIA-CIO, and we will look forward to participating in the collaborations he has generated to help our local inventors. It will be very beneficial for the clubs in the AIA-CIO to share resources and presentations.  I told him that my updated presentation on “How to Select the Right Processes ad Sources for Your Product” has been recorded on Zoom and will be available for viewing for free on September 9th and thereafter at this link.

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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.

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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.

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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 2017 – A 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

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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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