Category Archives: Patent Reform

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Why The Grace Period Restoration Act Is A Bad Idea

Representatives Sensenbrenner (R-WI) and Conyers (D-MI) have introduced the “Grace Period Restoration Act of 2015” (H.R. 1791) to “correct the drafting problem in the Leahy-Smith American Invents Act relating to the grace period,” and “maintain the position of leadership of the United States in educational, technological, and scientific programs.” After giving some thought to the … Continue reading this entry

STRONG Patents Act Would Fix Micro Entity Gap

Senator Coons (D-Del) has introduced patent reform legislation that is similar to but different from the Goodlatte Innovation Act pending in the House. One section of S. 632 that does not have a parallel in H.R. 9 relates to micro entity status, and would fix the problem with 35 USC § 123 that left universities out … Continue reading this entry

A Second Look At The Innovation Act Obviousness Type Double Patenting Statute

When the Innovation Act first was introduced, I was skeptical of the proposed obviousness-type double patenting statute. I did not understand why some thought that patents that fall under the First-Inventor-To-File provisions of the American Invents Act would not be subject to the existing judicially-created doctrine of obviousness-type double patenting, and I thought that the … Continue reading this entry

Concerns About The Goodlatte Innovation Act

On February 5, 2015, House Judiciary Committee Chairman Bob Goodlatte (R-Va.) introduced the Innovation Act, which is touted as “address[ing] the ever increasing problem of abusive patent litigation.” The bill was introduced as H.R. 9, and is the same as the bill that passed the House in 2013 as H.R. 3309. As I wrote in this … Continue reading this entry

Finally Facing First Inventor To File Issues

It has been over three years since the Leahy-Smith America Invents Act was signed into law by President Obama, and just over eighteen months since the effective date of the first-inventor-to-file changes to 35 USC § 102. While those changes were a hot topic in March of 2013, it is only over the past few weeks … Continue reading this entry

USPTO Promotes Patent Litigation Toolkit

If you subscribe to USPTO email updates like I do, then you probably received an email recently announcing that the “USPTO Launches Updated Patent Litigation Toolkit and Hosts Free Webinar about Toolkit Resources.” When one of my colleagues asked why the USPTO is disseminating information on how to “challenge” patents that they granted with a … Continue reading this entry

Public Comments On USPTO Proposed Attributable Ownership Rules

The USPTO proposed attributable ownership rules would require the public disclosure of the “attributable owner” of patent applications and patents. In this article, I outlined some of my concerns with the proposed rules. Here, I provide a review of some of the written comments submitted to the USPTO in response to the Federal Register Notice. … Continue reading this entry

Court Won't Review USPTO Denial Of Inter Partes Review

In a decision issued on April 18, 2014, Judge Payne of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the case brought by Dominion Dealer Solutions, LLC to challenge the USPTO’s decisions denying petitions to institute inter partes review of five patents granted to Autoalert, Inc. As I predicted in this … Continue reading this entry

Patent Law Treaty Sets Minimum Two Month Response Periods

Since the Patent Law Treaty Implementation Act took effect on December 18, 2013, applicants may have noticed that they are being given a longer period of time to respond to certain Office Actions, such as Restriction Requirements. This is because one of the “procedural” changes wrought by the Patent Law Treaty regulations is to require … Continue reading this entry

Patent Reform: The Leahy Patent Transparency And Improvements Act

Now that the Goodlatte Innovation Act has passed the House, its provisions likely will be reconciled with the Patent Transparency and Improvements Act (S. 1720) that was introduced in the Senate by Senator Leahy (D-Vt.) on November 18, 2013. While much attention will be paid to the patent litigation and post grant review provisions, the bill … Continue reading this entry

Round Two Of U.S. Patent Reform Progresses As House Passes Goodlatte Innovation Act

On December 5, 2013, the U.S. House of Representatives passed H.R. 3309, the “Innovation Act” originally introduced by Congressman Goodlatte (R-VA). The bill passed by a vote of 325-91, with four amendments to the bill as introduced. Chairman Leahy has introduced similar legislation in the Senate, but significant differences remain to be resolved. Nevertheless the … Continue reading this entry

USPTO Issues Proposed Rules On Design Patents To Implement Hague Treaty on Industrial Designs

On November 29, 2013, the USPTO published its proposed rules to implement “the Hague Agreement Concerning International Registration of Industrial Designs.” The changes relate to the design patent provisions of Title I of the Patent Law Treaty Implementation Act (PLTIA). Written comments on the proposed changes to design patent practice are due by January 28, … Continue reading this entry

Significant Changes Under Patent Law Treaty Take Effect December 18, 2013

As Congress continues to propose new legislation to “improve” the Leahy-Smith America Invents Act (AIA), practitioners and stakeholders must not forget that significant law and rule changes implementing the Patent Law Treaty of 2000 (PLT) take effect December 18, 2013. The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on December 18, 2012, and the USPTO … Continue reading this entry

Goodlatte Proposes An Obviousness Type Double Patenting Statute

Many thanks to my colleague Andrew Baluch for his contributions to this article. One of the provisions of the Innovation Act introduced by Congressman Goodlatte (R-VA) on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the first-inventor-to-file regime. However, the proposed statutory language appears to both … Continue reading this entry

The Goodlatte Innovation Act Proposes More U.S. Patent Reform

On October 23, 2014, Congressman Goodlatte (R-VA) introduced the “Innovation Act,” which is intended “to make improvements and technical corrections” to the Leahy-Smith America Invents Act (AIA) “and for other purposes.” Although the bulk of the Act focuses on patent litigation, Section 9 includes significant changes to a variety of substantive provisions of U.S. patent … Continue reading this entry

USPTO AIA Forum To Be Held On Second Anniversary Of The America Invents Act

On September 16, 2013–the second anniversary of the America Invents Act (AIA)–the USPTO will host a forum on the AIA at its Alexandria, Virginia campus. The USPTO AIA forum will provide an overview of AIA implementation to date, and will include an opportunity for practitioners and stakeholders to ask USPTO representatives about specific provisions of … Continue reading this entry

Congressman Goodlatte Proposes To Codify Obviousness-Type Double Patenting

As I wrote previously, Congressman Goodlatte (R-Va.) released “a discussion draft” of patent reform legislation on May 23, 2013. Although the stated purpose of the draft legislation is to “address the ever increasing problem of abusive patent litigation,” it also includes other significant proposed changes, including provisions that would eliminate Section 145 actions and eliminate Exelixis … Continue reading this entry

Congressman Goodlatte Proposes Patent Reform to Eliminate Section 145 Actions And Exelixis I-Type Patent Term Adjustment

As reported on the House Judiciary Committee website, on May 23, 2013, Congressman Goodlatte (R-Va.) released “a discussion draft of legislation designed to address the ever increasing problem of abusive patent litigation.” This draft legislation comes on the heels of the Patent Abuse Reduction Act of 2013 (S. 1013), which was introduced in the Senate … Continue reading this entry

U.S. and USPTO Move To Implement The Patent Law Treaty of 2000

While U.S. patent practitioners have been focusing on the changes to U.S. patent law embodied in the Leahy-Smith America Invents Act (AIA), Congress has taken additional steps to harmonize and streamline patent application procedures in accordance with an international treaty, the Patent Law Treaty of 2000 (PLT). The Patent Law Treaties Implementation Act of 2012 … Continue reading this entry

USPTO Rules Eliminate Inter Partes Review Dead Zone

On March 25, 2013, the USPTO published final rule changes to “Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review.” The rule changes have an effective date of March 25, 2013, and relate to statutory changes with an effective date of January 14, 2013. The Dead Zone The AIA … Continue reading this entry

Preserving First-To-Invent Status Under The America Invents Act

Now that the first-inventor-to-file provisions of the America Invents Act (AIA) have taken effect, stakeholders should understand how to preserve the first-to-invent status of patent applications that were filed before March 16, 2013.… Continue reading this entry

Does The Experimental Use Exception Survive The AIA?

Now that the March 16, 2013 effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) is fast-approaching, I have been reviewing the commentary in the USPTO’s February 14, 2013 Federal Register Notices publishing the final First Inventor To File rules and Examination Guidelines. Comment 12 of the Guidelines, which relates to … Continue reading this entry

Maximizing The Effect Of Patent Applications As Prior Art Under The AIA

Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure examination under the current First-To-Invent patent system, or wait until March 16, 2013, so that the applications will be governed by the … Continue reading this entry