On March 16th, The Leahy-Smith America Invents Act (“AIA”) will go into effect, representing the culmination of six years of legislative effort to reform the American patent system.  The AIA does a great deal of shuffling about and reordering of amendments, but the main change is that America is going from a first-to-invent system to a first-to-file system.

This is supposed to be eliminating a lot of the expensive litigation that drives smaller mom and pop inventors, who can’t afford an army of lawyers, out of the patent game.  The basic idea is that it should be cheaper and easier for a poor patent holder to prove that they were the first to file a given patent, rather than prove that they were the original inventor, because proving that they were the first to invent something  would require both sides to produce logbooks, prototypes, witnesses, and the like.  The basic policy argument, then, is that the greater certainty in the process and efficiency through lower litigation is supposed to outweigh the harms caused by occasionally giving a patent to someone who was not actually the first and original inventor.  Since it seems the patent office is not especially well equipped to decide who the first inventor is in the first place, the change to a first-to-file system may be worthwhile.

But, there are two problems with the change.

The first is that it remains a lot more complicated than just being the first-to-file.  To illustrate, you have to understand that the change in the law that actually brings us to this first-to-file system is accomplished more or less by entirely removing the following section from the old patent law:

“A person shall be entitled to a patent unless…

(f) he did not himself invent the subject matter sought to be patented.”

An astute reader will be wondering about those other clauses contained in sections (a) through (e) (and indeed in (g)); did we also eliminate those in favor of efficiency gains?  No!  Unfortunately, they’ve been shuffled into the new patent law:

“A person shall be entitled to a patent unless…

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”

These exceptions cover all of the ways in which someone would normally prove that a person other than the patent holder or applicant had invented the device.  A poor inventor still must defend his patent against claims that it was published in a graduate thesis available only in a German library or was used by scientists in a secure government lab.  The only situation in which the new system really takes into account who was the “first-to-file” is when two people independently and confidentially invent a device, a relatively rare event.  This had occurred only 64 times in 2011, a year when 535,100 patent applications were filed.

The low probability of this situation is even more pronounced when one considers that lone inventors and the big companies that could crush them are almost never working on the same ideas at the same time.  Independent inventors simply lack the facilities to develop in the contentious high-tech fields where the true patent battles are being fought.  To illustrate, in 2011, more than 20,000 patents were issued to individual inventors.  The only categories of inventions with more than 300 patents issued, however, were furnishings, tools, equipment for serving or preparing food, and apparel.  No category relating even tangentially to computers or technology had more than 200.  By contrast, the patent office issued IBM alone more than 6000 patents for technology in the same period.

This brings us to the second problem.

In the unlikely event that two inventors simultaneously stumble upon the same idea, it would seem that a first-to-file situation favors the inventor that can afford to more rapidly file for patents.  A provisional application for a small entity is only $110, but a wary inventor must file them frequently in order to preserve each patentable portion of his invention.  Such a fee might not deter a serious professional, but again, the hobbyist who tinkers in cheap areas of tech is unlikely to spend half of his inventing budget on patent applications, especially if he has to incur the expense of a lawyer filing and preparing them.

So in the end, we have a law that doesn’t solve a problem that never really existed.  Things could probably be worse.