Hofstra Law Review


Congress enacted the America Invents Act ("AIA") to bolster economic development, sustain American innovation, and protect American jobs. This pro-business legislation, however, overlooked one actor critical to any successful innovation endeavor: the inventor. The AIA created access barriers, preventing inventors from efficiently and effectively seeking the entire remedy spectrum to which they are entitled. Paul Morinville and others have opined that the new first-to-file system put small inventors out of business, naming the AIA the single worst disaster in the history of the U.S. patent system. Beyond the filing and subject matter changes, the AIA created fundamental access to justice barriers that others have yet to fully interrogate. Through amendments to the AIA, specifically 35 U.S.C. § 256, Congress created a system which simultaneously impedes an inventor's comprehension of their rights to remedy, affords greater leeway to patent owners to protect inequitably obtained patents, and fails to penalize bad actors. Congress removed the "deceptive intent" language from § 256 and formally allowed inventorship corrections regardless of inequitable conduct. These amendments removed the choice of remedy for an inventor deceptively overlooked in the patent process -- no longer clearly presenting their rights to pursue correction or invalidation of the patent. The amendments hide the spectrum of remedies from the wronged actor, providing yet another corporate advantage in the already imbalanced power dynamic between inventor-employee and corporation-employer. Further, Congress created an undue and duplicative litigation burden, wherein actors can seek both patent inventorship correction and patent invalidation for inequitable conduct in parallel litigation proceedings. Herein, I propose amendments to reestablish the balance between inventor and corporation, improving access to remedies and reducing duplicative burdens on the U.S. court system. Through these changes, the AIA can effectively bolster economic development by recognizing and empowering inventors

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