PharmaPatents Timely Insight on Emerging Legal Developments

Tag Archives: HR 1249

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.

Continue reading this entry

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.

Continue reading this entry

Pressing The Patent Reform Panic Button

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

Rumor has it that the Senate will vote on the House Patent Reform bill (HR 1249) this week. The Senate is scheduled to vote on the procedural issue of “cloture” on the bill in its first roll call session on Tuesday, September 6, 2011 at 5:30 pm. The cloture process limits further debate and precludes new amendments after the vote, although amendments may be introduced on Tuesdaty before the vote. If the Senate approves the House bill without amendment, the Leahy-Smith America Invents Act could become law within a few days. (I still don’t believe it!)

The full text of HR 1249 is nearly 100 pages long, and different provisions have different effective dates, and will be more or less important to different groups. In this article, I outline the effective dates of some of the provisions of interest, based on my understanding of HR 1249.

Because of the potential significance of this law and the complexity of HR 1249, I remind my readers that this article does not provide legal advice, but rather is intended to spur further review and discussion.

Continue reading this entry

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.

Continue reading this entry

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.

Continue reading this entry

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.