What is the Inventor Protection Act?
The proposed Inventor Protection Act, otherwise known as H.R. 6557, is
sponsored by Representative Dana Rohrabacher of California. Ostensibly, it is designed to protect individual inventors and their rights to the innovations they create, and backers say that it will
promote further innovation in the future.
Essentially, the Inventor Protection Act is aimed at counteracting portions of two decisions that were handed down by the U.S. Supreme Court in recent years. Both of these decisions are thought to
have limited the legal remedies that patent owners can seek when they allege infringement. Moreover, they may limit some options that patent owners used to have when filing a patent infringement
case. Specifically, the proposed bill mentions that using an injunction to prohibit others from using a patent's technology was eliminated in the eBay vs. MercExchange case of 2006. The proposed
legislation also mentions that filing patent infringement lawsuits in the patent owner's jurisdiction was made virtually impossible thanks to the outcome of TC Heartland vs. Kraft Foods Group Brands in 2017
What Would the Bill Do?
The proposed law is primarily aimed at inventors who are patent owners. Being
able to use an injunction and file a lawsuit in their own jurisdiction would be of enormous benefit to these entrepreneurs.
The proposed law further takes aim at many other issues in the patent world. In simple terms, the bill is meant to protect the rights of small inventors. This is a reaction to the feeling that the
patent world is one in which only the big players have a viable chance of succeeding. It is an idea that is not entirely unfounded with many multi-national corporations hoarding patents and suing for
infringement at the drop of a hat. Individual inventors simply do not have the deep pockets and legal resources that are readily available to large companies. This means that when big business
alleges infringement, most small inventors cannot fight.
Accordingly, the proposed law is supposed to protect the rights of inventors who also are patent owners. This means that the inventor has not assigned the rights to their patent over to a business
entity, as is a common practice. The reality is that most patents are granted on inventions that employees create in the course of their employment. Usually, these rights are formally transferred to
the employer by means of an assignment agreement. This makes the entity the owner of the patent and essentially places responsibility for dealing with any infringement accusations or other matters
that may arise on the company.
It is easy to visualize numerous problems that may arise if the law passes as
it now exists. Extending protections and options to small inventors is a good idea, but this particular law doesn't seem to address the problem adequately. For instance, it does not take into account
that most patents have more than one inventor. If one inventor falls out with the others, what becomes of the patent rights under the new law? One dissenting inventor can make it impossible to
license or enforce an inventor-owned patent.
Moreover, if inventors instead of employers own patents, what happens to those rights when the employee seeks a job elsewhere? It may be that the inventor's former co-workers will continue to build
on the technology, which may lead to a continuation-in-part patent application. If one of the prior inventors no longer is employed at the same company, how is patent ownership divided? The answers
to these questions may become increasingly complicated if this new law passes as written.
Innovation is important to America's future, but the proposed legislation does not necessarily solve as many problems as it purports to do. Making it possible for inventors to file infringement
lawsuits in their own jurisdiction certainly makes sense, but it is not necessarily a good idea for all of these benefits to only apply to patents that are owned by inventors. This is because many
patents are assigned to small companies and startups that also do not have deep pockets and legal teams on retainer. Unless this law can be extended to protect more innovators than just independent
inventors, it is unlikely to have the effect for which legislators are hoping.
If you need assistance with any patents please request a free consultation
with the Law Offices of Jeff Williams PLLC.