On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed patent fees. Even taking the USPTO’s cost estimates at face value, I have several questions and concerns about some of the proposed fees. Continue reading this entry
Tag Archives: Leahy-Smith America Invents Act
USPTO Publishes Proposed Rules For New Patent Challenges And Outlines New Patent Fees
Posted in Patent Reform; USPTO Proposed Rule ChangesThe 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
More On Supplemental Examination: The USPTO’s Cost and Volume Estimates
Posted in Patent Reform; USPTO Proposed Rule ChangesEarlier this week I provided a summary of the USPTO’s proposed rules to implement the Supplemental Examination provisions of the America Invents Act. The Federal Register Notice also includes a discussion of the USPTO’s estimate of how much a Request for Supplemental Examination will cost to prepare, and its estimate of how many Requests will be filed on an annual basis. Members of the public may submit written comments on these estimates by March 26, 2012.
Continue reading this entry
Supplemental Examination: Airing Your Dirty Laundry?
Posted in Inequitable Conduct; Patent Reform; USPTO Proposed Rule ChangesAs I was reviewing the USPTO’s proposed rules to implement the Supplemental Examination provisions of the America Invents Act, one issue that crossed my mind is the problems that could arise if a patent holder’s initial Request for Supplemental Examination is not granted. In this article, I discuss that potential problem and some possible solutions.Continue reading this entry
Proposed AIA Implementation Rules: Supplemental Examination
Posted in Patent Reform; USPTO Proposed Rule ChangesThe USPTO has issued its proposed rules to implement the Supplemental Examination provisions of the America Invents Act. As I noted last week, the same rules package sets a new fee for ex parte reexamination at $17,750. Now that the shock of that amount has worn off, I am ready to take a look at the proposed Supplemental Examination rules. The USPTO will consider written comments received by March 26, 2012.Continue reading this entry
Proposed AIA Implementation Rules: Preissuance Submissions In Pending Applications
Posted in Patent Reform; USPTO Proposed Rule ChangesOn 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 in Patent Reform; USPTO Proposed Rule ChangesOn 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 in Patent Reform; USPTO Proposed Rule ChangesOn 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 in Patent Reform; USPTO Proposed Rule ChangesLast 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 in Patent Office Practice; Patent ReformNow 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
We Wrote The Book On Patent Reform
Posted in Patent Reform; UncategorizedJust in time for holiday gift-giving, to make good on your New Year’s resolution to figure out what the America Invents Act is all about, and to kick-off your 2012 library purchases:
As summarized by the publisher:
The Leahy-Smith America Invents Act makes the most sweeping changes to the U.S. patent law in nearly 60 years. America Invents Act: Law & Analysis is the definitive, must-have resource to ensure understanding of and compliance with the new America Invents Act.
Authored by top U.S. patent law firm Foley & Lardner, this title presents a definitive explanation of the new patent reform legislation. The authors bring clarity to the complex and confusing provisions of the America Invents Act, as well as insight into how the Act could be interpreted.
America Invents Act: Law and Analysis will be an invaluable resource to help you:
• Understand the implications of the new patent reform act through clear and straightforward explanations.
• Quickly find the correct effective date for important changes in the law.
• Gain practical guidance on how the Act may be interpreted so you can anticipate how the Act may affect your clients.
Table of Contents
Chapter 1. Introduction – Courtenay C. Brinckerhoff and Sharon S. Barner
Chapter 2. The First-To-File Provisions – Courtenay C. Brinckerhoff
Chapter 3. Derivation and Derivation Proceedings – Antoinette F. Konski
Chapter 4. Changes Impacting Patent Prosecution – Lauren L. Stevens, Lorna L. Tanner and Courtenay C. Brinckerhoff
Chapter 5. Transitional Program for Covered Business Methods – Paul S. Hunter
Chapter 6. Inter Partes Review and Post-Grant Review – Jacqueline D. Wright Bonilla
Chapter 7. Provisions Related to Litigation – Debra D. Nye
Chapter 8. Other Components of AIA – Lauren L. Stevens, Lorna L. Tanner and Jacqueline D. Wright Bonilla
Appendix A The America Invents Act
Appendix B Patent Act Redline Version
Appendix C Side-by-Side Comparison of Old and New Patent Act Sections
Appendix D Comparison of Selected Sections of Pre-AIA and AIA U.S. Patent Law
Appendix E Revision of Standard for Granting an Inter Partes Reexamination Request
Appendix F Ex Partes Quarterly Report – September, 2011
Appendix G Inter Partes Quarterly Report – September, 2011
Upcoming Changes To The Inventor Oath/Declaration Requirements
Posted in Patent Office Practice; Patent ReformProvisions 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.
File Electronically To Avoid “Tax” On U.S. Patent Applications
Posted in Patent ReformThe 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.
USPTO Fee Diversion Escalates With Higher User Fees
Posted in Patent Office Practice; Patent ReformOne of the first provisions of the Leahy-Smith America Invents Act to take effect was the 15% surcharge on most USPTO user fees that the USPTO started collecting on September 26, 2011. As I wrote previously, the USPTO has not been able to spend any of the extra fees collected in the last few days of the fiscal year that ended September 30, 2011, and will not be able to spend any of the additional fees it is collecting now unless and until Congress increases its appropriations.
Last week, the Intellectual Property Owners Association (IPO) published numbers that drive home the extent of the fee diversion problem, and illustrate how patent reform is exacerbating the situation. Before patent reform was enacted, the USPTO had been on track to lose $70 to $100 million. However, because so many patent applicants paid fees “early” to avoid the new surcharge, the USPTO ended up collecting over $200 million more than it was authorized to spend. That means patent and trademark applicants paid over $200 million in fees that, instead of going to fund USPTO functions, went into the United States treasury’s general fund.
The New Prior Commercial Use Defense
Posted in Patent ReformWhile most provisions of the Leahy-Smith America Invents Act do not take effect until September 16, 2012 or March 16, 2013, several litigation-related provisions took effect immediately, on September 16, 2011. Among those is the newly expanded prior commercial use defense, which includes terms that are directly relevant to the pharmaceutical industry.
The Disharmonious Loss Of The Hilmer Doctrine
Posted in Patent ReformOne of the many changes included in the Leahy-Smith America Invents Act relates to the date that a U.S. patent application is effective as prior art. While eliminating the Hilmer doctrine and giving prior art effect to U.S. patent applications as of their foreign priority dates might seem to be a step towards international harmonization, it actually may widen the gulf between the U.S. and the rest of world.
The First-To-File Poison Pill
Posted in Patent ReformNow that we’ve been studying the Leahy-Smith America Invents Act for a few weeks, some of its subtle intricacies are coming to light. One of the more complex provisions relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102.
What Patent Reform Means To Biotech–My Podcast Interview On The Burrill Report
Posted in Patent ReformI was fortunate to be interviewed for a podcast on The Burrill Report (Life Sciences: Information • Intelligence • Insight), to discuss ”What Patent Reform Means To Biotech.”
You can listen → here.
When Being First-To-File Is Not Enough
Posted in Patent ReformThe 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.
Patent Reform–A Tax On Innovation?
Posted in Patent ReformThe 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 in Patent ReformAccording 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 Deadlines–More Traps For The Unwary?
Posted in Patent ReformThe 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 Clears Final Hurdle–President Obama Expected To Sign America Invents Act Soon
Posted in Patent ReformPatent 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.
Senate Vote Advances Patent Reform To Final Hurdle
Posted in Patent ReformOn 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.