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Tag Archives: America Invents Act

USPTO Publishes Proposed Rules For New Patent Challenges And Outlines New Patent Fees

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

The USPTO has published non-final versions of its proposed rules for the new “contested cases” created by the America Invents Act (Inter Partes Review, Post Grant Review and Derivation proceedings) on its AIA Implementation website. According to the USPTO, the official Federal Register Notices will be published later this week, on February 9 and 10. Written comments will be due by April 9 or April 10, depending on the exact publication date of the proposed rule at issue. 

The USPTO also has published its proposed patent fee schedule for the fees it plans to charge under its new fee-setting authority. The USPTO is holding PPAC Fee Setting Hearings on February 15 (at the UPSTO’s Alexandria campus) and February 23 (in Sunnyvale, California).Continue reading this entry

Proposed AIA Implementation Rules: Preissuance Submissions In Pending Applications

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to preissuance submissions of publications in a pending patent application. The proposed rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The USPTO will consider written comments received by March 5, 2012.Continue reading this entry

Proposed AIA Implementation Rules: Estoppel Against Ex Parte Reexamination

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent.  While I wrote about those changes previously, the same rules package includes proposed changes to the ex parte reexamination rules that I write about here. The USPTO will consider written comments received by March 5, 2012. Continue reading this entry

Proposed AIA Implementation Rules: Citation Of Prior Art And Written Statements

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent. The USPTO will consider written comments received by March 5, 2012. (The same Federal Register Notice also sets forth proposed rules to implement some of the estoppel provisions of the new inter partes review and post-grant review proceedings that I will address in a separate article.) Continue reading this entry

USPTO Issues First Batch Of Proposed AIA Implementation Rules

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

Last week the USPTO issued four Federal Register Notices with proposed rules to implement different aspects of the American Invents Act. Each proposed rule making has a 60 day comment period that expires in early March. As announced on the USPTO’s Leahy-Smith America Invents Act Implementation webpage, the USPTO will be carrying out an “AIA Roadshow” during this time period to discuss these and other forthcoming proposed rules with interested members of the public.Continue reading this entry

Gearing Up For September 16, 2012

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice; Patent Reform

Now that 2011 is coming to an end and I am catching my breath and getting organized for 2012, I thought it would be a good time to consider the USPTO’s plans for implementing the provisions of the America Invents Act that take effect September 16, 2012. According to the USPTO’s Leahy-Smith America Invents Act Implementation webpage, the USPTO will be publishing proposed regulations as early as mid-January.Continue reading this entry

Upcoming Changes To The Inventor Oath/Declaration Requirements

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice; Patent Reform

Provisions of the America Invents Act that take effect September 16, 2012 will change the requirements for the inventor oath/declaration. While some are touting the new ability of an assignee to file an application, even once these changes take effect an oath/declaration executed by the inventor(s) will be required in the vast majority of patent applications.

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Will Any Patent Application Be Better Off Under The America Invents Act?

Posted by Courtenay Brinckerhoff on Posted in 102; Patent Reform

The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject to a broader definition of prior art and will lose the ability to swear behind certain prior art by proving an earlier date of invention. Moreover, patents granted from such applications will be subject to challenge under the new post-grant review provisions.

In counseling clients on how to prepare for the impact of patent reform, I’ve been trying to identify situations where an application might be better off under the new law. So far, only one scenario comes to mind–an application threatened by an inventor-based disclosure that was made before a foreign priority date.

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File Electronically To Avoid “Tax” On U.S. Patent Applications

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The America Invents Act included two separate fee provisions with early effective dates. A 15% surcharge on many USPTO fees took effect on September 26, 2011. Next, a surcharge on patent applications that are not filed electronically will take effect on November 15, 2011.

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When Being First-To-File Is Not Enough

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The Leahy-Smith America Invents Act will bring the United States patent system closer to a “first-to-file” system, but it is important to understand that the changes to 35 USC § 102 have several exceptions to the first-to-file rule. While the one year “grace period” after an inventor’s own disclosure is easy to understand, the other exceptions are more complicated. Here, I look at when the first person to file may not prevail under the new system.

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Patent Reform–A Tax On Innovation?

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The enactment of the Leahy-Smith America Invents Act on September 16, 2011 means that a 15% surcharge on most patent office fees will take effect on September 26, 2011. (The USPTO has published the new fee schedule on its Leahy-Smith America Invents Act Implementation website). But, with no new appropriations, the USPTO will not be permitted to spend this money. Rather, it will go into the U.S. treasury’s general fund, further compounding the problem of fee diversion.

Although patent reform places significant new demands on the USPTO, there is talk of funding the USPTO under another “continuing resolution” for the new fiscal year that begins October 1, 2011. If the USPTO is not permitted to spend all of the (higher) fees it collects, it may be forced to pull resources from examination in order to meet the new statutory mandates.

The net effect of higher USPTO fees, increased demands on the USPTO, and a static or reduced USPTO budget will be a new tax on patent applicants–hardly the job-creating, innovation-promoting patent reform that we were promised.

President Obama Expected To Sign Patent Reform On Friday, September 16, 2011

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

According to the Washington Post, and supported by comments from Robert Stoll, USPTO Commissioner for Patents, during the September 14,2011 webinar hosted by Foley & Lardner LLP, President Obama is expected to sign the Leahy-Smith America Invents Act on Friday, September 16, 2011. That will make September 16, 2011 the “date of enactment,” triggering some immediate changes to U.S. patent law, and starting a short clock for other changes.

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The New Derivation Proceedings Deadlines–More Traps For The Unwary?

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The new derivation proceedings enacted by the Leahy-Smith America Invents Act include one-year deadlines for instituting derivation proceedings, based on the publication or issue date of a relevant patent claim. To the extent that these deadlines were intended to mirror 35 USC § 135(b), they may include an unintended trap for the unwary based on the USPTO’s interpretation of similar language in the deadline for filing an application for Patent Term Extension under 35 USC § 156.

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Patent Reform Clears Final Hurdle–President Obama Expected To Sign America Invents Act Soon

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

Patent Reform cleared its final hurdle on September 8, 2011, when the Senate approved the House version of the Leahy-Smith America Invents Act by a vote of 89-9, leaving only President Obama’s signature as the final step to make patent reform a reality. The President has expressed support for this legislation, and is expected to sign it into law very soon.

The Leahy-Smith America Invents Act makes the most sweeping changes to U.S. patent law in many decades, including moving the U.S. towards a first-to-file system, expanding prior user rights as a defense to infringement, eliminating interference proceedings, and creating new USPTO proceedings for post-grant review.

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Senate Vote Advances Patent Reform To Final Hurdle

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

On September 6, 2011, in its second item of business after its August break, the United States Senate approved a procedural motion to invoke “cloture” on the House patent reform bill (HR 1249).  This vote spares patent reform from any filibuster, prevents the introduction of new amendments, and sets a 30-hour limit on further debate. The Senate is expected to schedule final debate and vote on the bill very soon.

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Federal Circuit Won’t Let Creative Compounds Muscle Its Way Into Priority Of Invention

Posted by Courtenay Brinckerhoff on Posted in 102; Federal Circuit Decisions

In Creative Compounds, LLC v. Starmark Laboratories, the Federal Circuit clarified that the “clear and convincing” burden of proof applies to an allegation of prior invention unless an action is brought under 35 USC § 291 or the parties identify and agree on common claimed subject matter and seek an adjudication of priority.  While Patent Reform may do away with the specific provisions at issue in this case, at least some of the principles may carry over to the proposed “derivation” proceedings.

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How Will Patent Reform Solve The USPTO Backlog?

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

Last week, The Kojo Nnamdi Show on Washington, D.C. public radio station WAMU had two programs about patent reform. On Tuesday, there was a panel discussion on “Innovation and Patent Reform.” On Wednesday, Kojo talked with USPTO Director David Kappos about “Updating the U.S. Patent Office.” While I usually cringe when mainstream media discusses patent issues, I found these shows to be very good, even if I didn’t agree with everything that was said. One issue I would like to press Director Kappos about is his assertion that the pending patent reform legislation will help the USPTO solve the problem of the examination backlog.

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Not The Patent Term Extension Fix We Need

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The House patent reform bill (HR 1249) that was passed last week includes a provision that impacts the deadline for filing an application for patent term extension under 35 USC § 156 after receiving FDA approval for a patented product. Although the House provision addresses the issue before the district court in The Medicines Co. v. Kappos, it does not provide the fix we need.

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Patent Reform Clears Another Hurdle

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

It is getting harder and harder for me to not pay attention to patent reform: Yesterday, tthe House approved its version of Patent Reform (H.R. 1249, the America Invents Act).  

The next step is to reconcile the differences with the Senate version approved in March (S. 23). Perhaps the most significant difference relates to USPTO funding. The House version passed with a “compromise” on the anti-fee diversion provision which many USPTO supporters will find unacceptable. Although the House bill provides for USPTO user fees to be deposited into a separate fund, the USPTO’s spending authority still would be limited by Congressional appropriations. The House version also includes various provisions with no corresponding terms in the Senate version, which may or may not fall out of any final legislation.

While Patent Reform has at least one more hurdle to clear, it is getting closer and closer to the finish line.

USPTO Budget Cuts Halt Track I & Other USPTO Initiatives

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice

On April 22, 2011, USPTO Director Kappos announced the impact of the budget reductions embodied in the fiscal year 2011 budget that finally was enacted on April 15, 2011. (Fiscal year 2011 runs through September 30, 2011). The budget gives the USPTO the authority to spend only $2.09 billion, which is about $100 million less than its projected fee collections.

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Another Step Forward For Patent Reform

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

I’m still not writing about patent reform—really, I’m not! But on March 30, 2011, the House Judiciary Committee introduced its own version of a patent reform bill. Like the bill passed on March 8 in the Senate (S.23), it is called the America Invents Act. 

Foley & Lardner LLP has issued a Legal News Alert on the House bill, highlighting some differences vis-a-vis the Senate version.

While the introduction of the House bill increases the chance that patent reform will become a reality this year, it is still far from certain whether it will happen and what the final provisions will look like.

Patent Reform Moves One Step Forward

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

I’m still not writing about patent reform—really, I’m not! But on March 8, 2011, the Senate passed its patent reform bill, the America Invents Act (S.23), and on March 9, 2011, Foley & Lardner LLP issued a Legal News Alert highlighting key provisions. (If you notice my name as an author on the Alert, it’s just a coincidence.)

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