Although most of HR 6621 (introduced by Rep. Lamar Smith on Nov. 30, 2012) would make changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act,” the bill includes other provisions that are entirely unrelated to the AIA and that would dramatically impact patent term. The provision receiving the most public attention would eliminate the term of patent applications filed before June 7, 1995 (“pre-GATT applications”) that are still pending. But another provision would affect all pending and new applications, as well as recently granted patents, by changing the way that Patent Term Adjustment (PTA) is calculated and challenged under 35 USC § 154(b). Continue reading this entry
As of September 16, 2012, third parties have been able to make “Preissuance Submissions” of printed publications in pending patent applications. To date, the USPTO has received just over 100 Preissuance Submissions. This article provides some tips and strategies for both applicants and third parties. Continue reading this entry
While the early arrival of spring weather has many of us turning our attention to our gardends, pharmaceutical companies are facing a number of new developments in the patent landscape. In this podcast interview for The Burrill Report, I talk about Prometheus, Myriad, the compulsory license for Bayer’s Nexvar drug in India, and the status of the implementation of U.S. patent reform.
If you’ve been spending more time enjoying nature than drawing lines between laws of nature and products of nature, I’ll get you caught up in a few minutes.
Just 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
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.
One 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.
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.
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.
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.
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.
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.
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.
Now that the Senate is set to vote on the Patent Reform Act of 2011 this week, the mainstream media is weighing in on the issues. This Saturday, The Washington Post published an editorial in support of patent reform, (“Why The patent process should be overhauled,” Feb. 26, 2011) but it butchered the background facts so thoroughly that it did more to confuse the issues than enlighten the public. I sincerely hope that Senators are better informed when they place their votes this week.