For a short time on Friday, July 20, 2012, the USPTO’s proposed rules to implement the first-to-file provisions of the America Invents Act (“AIA”) were available in the Federal Register’s “electronic Reading Room.” According to the USPTO’s AIA Implementation website, the USPTO temporarily withdrew the proposed rules in order “to enable the Federal Register to publish the first-inventor-to-file rulemaking at the same time as the first-inventor-to-file guidance document” that the USPTO plans to issue. Because this explanation suggests that the USPTO does not intend to change the substance of the proposed rules, I will proceed with my review and analysis of the proposed rules as pre-published.Continue reading this entry
The USPTO published the final rules to implement the Preissuance Submissions provisions of the America Invents Act in the July 17, 2012 Federal Register. The final 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 rules take effect on September 16, 2012, and are applicable in principle to all pending patent applications. The final rules are similar to the proposed rules that were published in January, but there are some important differences and clarifications set forth in the final rulemaking.Continue reading this entry
A Federal Register Notice set to publish on May 30, 2012, sets forth the USPTO’s proposed rules for implementing the Micro Entity provisions of the America Invents Act (“AIA”). The proposed rules closely track the new law, but the USPTO seeks input on one important issue of statutory interpretation. Public comments on the proposed rules should be submitted by July 30, 2012.Continue reading this entry
As I previously pointed out, there are three proposed rules in the USPTO’s patent trial proceedings rules package that raise concerns and should be dropped. Public comments on these proposed rules were due April 9-10, 2012. Now that the public has spoken, let’s take a look at what people had to say about these three specific proposals.Continue reading this entry
One important strategy for adopting to the first-to-file system of the America Invents Act will be to segregate subject matter that has an effective filing date of March 15, 2013 or earlier from subject matter that has an effective filing date of March 16, 2013 or later. This is because even after March 16, 2013, it will be possible to pursue subject matter with an earlier effective filing date under the current first-to-invent system as long as it is segregated from subject matter with a later effective filing date. (For a more detailed explanation, see my previous article on The First-To-File Poison Pill.) While my previous article on the Ides of March outlined several reasons why it could be important to obtain an effective filing date of March 15, 2013 or earlier, Max Colice, a patent agent and member of the Electronics practice at Foley & Lardner LLP, has pointed out yet another reason to segregate subject matter before and after the first-to-file effective date.
Please welcome Andrew Baluch as a new contributing author for PharmaPatentsBlog!
There is a lot to like about the USPTO’s proposed rules for the new patent trial proceedings that the Patent Trial and Appeal Board (PTAB) will conduct under the America Invents Act (AIA). On the whole, the proposed rules released last month appear to be sound, well-written, and based largely on the “Standing Order” governing current Interference proceedings. The team of administrative judges that drafted the proposals should be commended for their work.
But, as with any project of this size, there is bound to be some oversight and possible overreach. After studying the seven Federal Register notices spanning 133 pages that comprise the post-grant rules packages, I particularly was struck by three specific proposed rules. As explained below, these three proposed rules appear to be unnecessary, unsupported by the law, and should be dropped. The USPTO would be doing everyone a favor, including itself, if it simply omits the following from its final rules.Continue reading this entry
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
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
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
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
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
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
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.