by Dennis Crouch
Rep. Danny Davis (D-Il) and Paul Gosar (R-Az) have introduced the Inventor Rights Act. H.R.5478 that creates a set of rights and privileges associated with inventor-owned patents. These are patents owned by their respective inventors or owned by an entities controlled by the inventors. In addition to ownership, the inventor must hold “all substantial rights.”
- No Involuntary Post-Issuance Proceedings against inventor-owned patents. No IPR, Post-Grant Review, or reexamination, or any other “determination about the validity” without “consent of the patentee.”
- Injunctions would now be likely against infringers of inventor-owned patents. The Bill would create a presumption of both irreparable harm and inadequate remedy at law for infringement of an inventor-owned patent.
- Broadened Venue for filing of infringement lawsuits. Here, the proposal does not recapture all of the venue “lost” in TC Heartland.
- Damages law would offer a new option: Profit disgorgement + attorney fees + treble damages for willfulness when inventor-owned patents are infringed.
Inventor Rights Act 2019. These are all major changes. Although all of the provisions have historic roots.
Currently, only a rather small fraction of patents would qualify as “inventor-owned patents” under the statute. However, the Bill would tend to both (1) encourage individual inventorship and (2) encourage patent holding situations that take advantage of the inventor-owner rights. Tech company founders would likely keep ownership of their patents, although I suspect that large companies would remain wary of allowing regular employees to retain “all substantial rights” in the patent.
Folks at US Inventor, including Josh Malone and Paul Morinville, have lobbied for the proposal and have included substantial discussion on their website: https://www.usinventor.org/inventor-rights-act/.