Tag Archives: Patent Reform

Federal Circuit Finds On Sale Bar From Purchase Order Between Patent Holder And Supplier

In Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc., the Federal Circuit affirmed the district court’s finding that the asserted claims were invalid under the on sale bar of 35 USC § 102(b) due to a purchase order between Hamilton Beach and it’s supplier. Judge Reyna’s dissenting opinion questions whether the transaction at issue was a … Continue reading this entry

HR 6621 Would Add New Barriers To Patent Term Adjustment (PTA) Appeals

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 … Continue reading this entry

Strategies For Preissuance Submissions In U.S. Patent Applications

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

Understanding The Shifting Patent Landscape: My Latest Podcast For The Burrill Report

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 … Continue reading this entry

We Wrote The Book On Patent Reform

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 … Continue reading this entry

Upcoming Changes To The Inventor Oath/Declaration Requirements

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 … Continue reading this entry

The Disharmonious Loss Of The Hilmer Doctrine

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 … Continue reading this entry

Patent Reform Clears Final Hurdle--President Obama Expected To Sign America Invents Act Soon

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 … Continue reading this entry

Senate Vote Advances Patent Reform To Final Hurdle

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 … Continue reading this entry

Pressing The Patent Reform Panic Button

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 … Continue reading this entry

Federal Circuit Won't Let Creative Compounds Muscle Its Way Into Priority Of Invention

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 … Continue reading this entry

Not The Patent Term Extension Fix We Need

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. … Continue reading this entry

Patent Reform Clears Another Hurdle

It is getting harder and harder for me to not pay attention to patent reform: Yesterday, the 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. … Continue reading this entry

USPTO Budget Cuts Halt Track I & Other USPTO Initiatives

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 … Continue reading this entry

The Washington Post Muddies The Waters On Patent Reform

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 … Continue reading this entry