This post is the first in an occasional series we’re calling Law and the Multiverse Retcons. We’ll be using these posts to discuss changes in the law (or corrections to our analysis) that affect older posts. Today we’re going to discuss the America Invents Act, which was recently passed by Congress and is expected to be signed into law tomorrow. The AIA is a patent reform act, and among its many changes to US patent law are two that affect topics we’ve written about here on the blog.
I. Batman, Patents, and Absolute Novelty
Way back when the blog was first started we wrote about Batman and patents. In that post we talked about two related issues. First, how Batman could use gadgets based on Wayne Enterprises technologies without preventing Wayne Enterprises from filing, and second, how Wayne Enterprises could patent those technologies without revealing it to Batman’s enemies, who might replicate it or exploit its flaws. In short, the answer was for Batman to use the technology no more than one year before Wayne Enterprises filed a patent application (thus avoiding the “on sale bar“) and for Bruce Wayne to use his Department of Defense connections to have the technology classified so that the Patent Office would not publish the application.
The America Invents Act changes the answer slightly. With the AIA there is no longer a one year grace period during which an invention can be sold, offered for sale, used, or published before the inventor has to file for a patent. This means that the US joins Europe in requiring what is called “absolute novelty.” The practical upshot for Batman is that he needs to make sure that Wayne Enterprises has filed for a patent before he uses a new gadget in public. Without the one year grace period even a single public use would be enough to destroy Wayne Enterprises’ patent rights.
(Edit: Technically the AIA preserves a grace period for disclosures made by the inventor or by someone who obtained the technology from the inventor. The problem is that Batman is usually not the inventor of technologies ‘borrowed’ from Wayne Enterprises, and it would be difficult for Wayne Enterprises to prove that Batman got the technology from them. With very few exceptions, nobody at Wayne Enterprises knows where Batman gets his gadgets, and those that do know (e.g. Lucius Fox in the movies) aren’t going to tell.)
II. Spider-Man and Gene Patents Redux
Another post that the AIA affects is this mailbag post on Spider-Man and gene patents. In the 2002 movie Spider-Man, Peter Parker becomes Spider-Man after being bitten by a genetically engineered spider (as opposed to the traditional radioactive one). In a post on the subject we discussed various reasons why Parker likely wouldn’t be liable for patent infringement if the genetically modified spider were covered by one or more gene patents.
The AIA makes this even simpler. The Act flatly prohibits any patent that is “directed to or encompass[es] a human organism.” In order for Parker to be liable the patent’s claims would have to encompass a human organism (namely Parker), and thus the patent would be invalid under the AIA. We can pretty firmly shut the book on that one, then!