Patent Reform Quick Links
US Enacts Patent Reform
September 16, 2011
President Obama signed into law today the Leahy-Smith American Invents Act of 2011, a groundbreaking patent reform bill that significantly changes the US patent system.
For the general public, the Leahy-Smith America Invents Act (AIA) has been touted as a package of reforms that should imporve the US patent system. The ultimate goal of the reforms is to encourage investment in innovation and, as a result, stimulate job growth. For inventors, patent owners and patent professionals, the AIA represents the biggest set of changes to US patent laws in 60 years. Initially introduced into Congress in 2005, the final bill includes three major changes, along with a wide variety of other "little" changes. Interestingly, the most high profile provisions in the original bill, those aimed at reforming patent litigation, were utilimately rejected and left on the Congressional cutting-room floor.
Given that many of the major changes represented in the 150 page bill will be phased in over time, it could be a decade or more before their true impact on the US patent system can be evaluated.
For a more comprehensive look at the AIA and how it will change US patent law, download our white paper: US Patent Reform: What Really Changes?
Brad Pederslen quoted in Seattle Post-Intelligencer.
USPTO Develops Patent Reform Implementation Website
If the Leahy-Smith America Invents Act becomes law, the USPTO will have to act fast in coming up with rules for implementation. The agency has created a new section on its website to keep stakeholders and the public informed.
Patent Reform -- Effective Dates
The Leahy-Smith America Invents Act (AIA) has been passed by both houses of Congress in two somewhat different versions, and if the two versions are reconciled, President Obama has announce his intention to sign the AIA into law. The AIA includes many provisions that are not presently part of patent law. The transition from current law to the new law will take place over several years. The following is a summary of when certain provisions take effect. The section citations are based on a compared version of the two bills.
First Inventor to File
The United States will become a first-inventor-to-file (FITF) regime under the reformed Act. See Section 3. The FITF provisions will take effect 18 months after enactment. See Sec. 3(n)(1).
NOTE: There will be a “grace period” for the inventor to file after certain public disclosures. The new § 102(b)(1) provides that disclosures made by the inventor(s) one year or less before the effective filing date shall not be prior art. Therefore, publications by inventors will have the full effect of §102(b)(1) starting six months after enactment.
Filing by Assignee
Assignees to whom the inventor’s rights in the invention have been assigned can file directly instead of inventors under the new act. See Sec. 4(b)(1). Assignees can start filing one year after enactment. See Sec. 4(e).
Earlier Inventor Defense
Any person who invented before the first inventor to file a patent application can raise a personal defense to infringement. See Sec. 5. This provision takes effect immediately upon enactment and applies to any patent issued on or after the enactment date. See Sec. 5(c).
Post-Issuance Proceedings
(including Post Grant Review and Inter Partes Review
The new Post-Issuance Proceedings (PIP) include a “Post Grant Review” and an “Inter Partes Review.” See Sec. 6. The PIP provisions will take effect one year after enactment and shall apply to all issued patents. See Sec. 6(c)(2)(A). There is also a graduated implementation provision that empowers the Director of the United States Patent & Trademark Office (USPTO) to impose a limit on the number of inter partes reviews during each of the first four years following enactment. See 6(c)(2)(B).
Patent Trial and Appeal Board (PTAB)
The Board of Patent Appeals and Interferences (BPAI) will be replaced by the Patent Trial and Appeal Board (PTAB). See Sec. 7. The PTAB will be formed one year after enactment and will handle proceedings commenced thereafter, with some exceptions. See Sec. 6(d). NOTE: There are two sections listed as "Sec. 6(d)."
Third Party Submissions
Third parties can submit publications for consideration in a patent application. See Sec. 8. Third party submissions shall take effect one year after enactment. See Sec. 8(b).
Fee Setting Authority
Current versions of the bill grant fee setting authority to the USPTO. See Sec. 10. Fee setting authority will be assumed by the USPTO immediately upon enactment. See Sec. 10(i)(1). This authority is repealed by a sunset provision seven years after enactment of the act. See 10(i)(2).
Supplemental Examination
Patent owners can effectively “cleanse” a patent from specific charges of inequitable conduct by requesting a supplemental examination. See Sec. 12(a). This will protect the patent owner from charges of inequitable conduct but not the attorney(s) representing them. The effective date for supplemental examinations is one year after enactment and will be available for any issued patent. See Sec. 12(h).
Tax Strategies
Any strategy for reducing, avoiding or deferring tax liability will be insufficient to differentiate a claimed invention of the prior art. See Sec. 14(a). The effective date for the tax strategies provisions is immediately upon enactment and will apply to patents issued or pending on that date. See Sec. 14(e).
Best Mode
The requirement of disclosing the best mode of an invention shall not be a basis for invalidity or unenforceability. See Sec. 15(a). The elimination of failure to disclose best mode as a defense will take effect immediately upon enactment and shall apply to proceedings commenced on or after that date. See Sec. 15(c).
Virtual Marking
Provisions of the Act codify virtual marking. See Sec. 16(a)(1). These provisions, take effect immediately upon enactment and apply to court cases pending or commenced on or after that date. See Sec. 16(a)(2).
False Marking
False marking claims can be brought only by the United States. See Sec. 16(b)(1). Only those suffering competitive injury can collect damages. See Sec. 16(b)(2). These provisions take effect immediately upon enactment, and apply to court cases pending or commenced on or after that date. See Sec. 16(b)(4).
Transitional Post-Grant Review Proceedings for Business Method Patents
A person who has been sued for infringement of a business method patent can challenge the validity of any claim of the business method patent under section 102 or 103 as they existed prior to the implementation of the act based on prior art meeting certain criteria. See Sec. 18. These provisions take effect one year after enactment of the law. See Sec. 18(b)(1).This subsection has a sunset provision that repeals it after four years. See Sec 18(b)(3).
Joinder of Parties in Patent Infringement Actions
Accused patent infringers may not be joined in a patent infringement law suit solely on the basis that they are alleged to infringe the same patent or patents in suit. See Sec. 19. This provision takes effect immediately and applies to any patent infringement suit filed on or after the date of enactment. See Sec. 19(d).
Is Patent Reform Finally Crossing the Finish Line?
On June 23, 2011, the House passed HR 1249, The Leahy-Smith America Invents Act, with relatively wide bipartisan support by a vote of 304-117. Amendments seeking to strike each of the three major parts of the bill, which include (a) changing to a first-inventor-to-file system, (b) giving the Patent Office fee setting authority, and (c) significantly revising the scope and process for post issuance proceedings at the Patent Office, were each defeated during the debate on the bill. Patent reform now moves back to the Senate which passed a similar bill last March—the American Invents Act (S 23)—by a vote of 95 to 5. Once reconciled, the bill, which has been seven years in the making, is expected to be signed by the White House and will bring about the largest changes in United States patent law since 1952.
Patent Reform Bills S. 23 and H.R. 1249
S. 23 (As Passed by Senate)
H.R. 1249 (As Signed into Law)
S. 23 and H.R. 1249 Comparison
"The Matrix" Revised
May 2010 - With Patent Reform legislation now leaning toward a first-to-file-with-grace-period (FTFG) system, rather than first-inventor-to-file, Brad Pedersen and Justin Woo re-run their investigation to provide a glimpse into the "what if" of an FTFG system. Their article, The "Matrix" for Changing First-to-Invent: An Experimental Investigation into Proposed Changes in U.S. Patent Law, was published on Cybaris, An Intellectual Property Law Review.
Interview with the authors on Cybaris
Senate Leaders Reach Agreement on Patent Reform
March 2010 - U.S. Senator Leahy (D-Vermont) and five other Senators unveiled an agreement on patent reform legislation March 4, 2010. The tentative agreement serves as a substitute for the bill approved by the Senate Judiciary Committee last year.
Patent Reform Bills Comparison
Patent Reform Update Presentation (MN-CLE March 5, 2010)
The Matrix for First-Inventor-to-File
December 2009 - Brad Pedersen and Justin Woo examine whether or not moving from a first-to-invent to a first-inventor-to-file patent system in the United States will achieve the goal of global harmonization. Their results were published on the Social Science Research Network: The "Matrix" for First-Inventor-to-File: An Experimental Investigation into Proposed Changes in U.S. Patent Law.
USPTO Rescinds Rule Changes
October 2009 - The saga of the USPTO’s controversial proposed rule changes appears to have come to a close. On October 8, 2009 the Patent Office announced that it is rescinding the rules and will file a motion to dismiss and vacate the federal district court decision in the related lawsuit, Tafas v. Kappos. USPTO Press Release
Patent Reform Historical Perspective
Patent Reform in the Deep Freeze
July 2009 - The patent reform movement, both in terms of legislation and rule-making, appears to be frozen in its tracks. Here’s a summary of what has happened over the past several months. Patent Reform in the Deep Freeze
Update: New Rules Trainwreck Averted
April 2008 - A District Court in Virginia handed down a decision that permanently blocks implementation of the USPTO's proposed new rules. Read Brad Pedersen's summary and analysis: The New Rules Train is Off the Tracks
New USPTO Rules On Hold For Now
November 2007 - GlaxoSmithKline and several other defendants were successful in blocking implementation of the new USPTO rules on the eve of November 1 effective date.
No Trainwreck, For Now - Article by Brad Pedersen explaining the ruling and what could happen next.
GSK Preliminary Injunction Order
GSK Memorandum Opinion
www.uspto.gov
New Rules Triage: What to Consider Before November 1
October 2007 - Article by attorney Brad Pedersen
New Rules Triage
Claims and Continuations Practice - Final Rule
Click below for information and updates on the new rules for claims and continuations on the USPTO’s website
www.uspto.gov
New USPTO Rules Q & A
October 2007 - A collection of some more indepth inquiries by our clients and colleagues regarding the new USPTO Rules.
PDF Version
-UPDATED- The New PTO Rules: How to Deal with an Impending Train Wreck
October 2007 - A detailed presentation about the new USPTO rules on claims and continuations. This presentation is updated on a regular basis to reflect current guidance on the new rules.
PDF Version
Power Point Show - (Large File, may take a few minutes to load)
The Rapidly Changing Landscape of Patent Rules, Case Law and Patent Laws
October 2007 - An overview of the triad of forces that are changing patent law as we know it. This presentation includes narration by attorney Brad Pedersen.
PDF Version
Power Point Show - (Large File, may take a few minutes to load)
The New PTO Rules: How to Deal with an Impending Train Wreck
October 2007 - This presentation includes narration by Patterson Thuente partner Brad Pedersen.
Power Point Show - (Large File, may take a few minutes to load)
The Intellectual Property Train Wreck (animated video)
This animated short illustrates how many are feeling about the new rules (all in fun, of course!) Superman Cartoon Clip from “Billion Dollar Limited” original copyright 1943 by Paramount Pictures, now in public domain and used under Creative Commons Copyright License
The Rush to a First-to-File Patent System in the United States
June 2006 - The patent reform movement began with the introduction of the Patent Reform Act of 2005 in June 2005. A year later, Brad Pedersen and Vadim Braginsky published The Rush to First-to-File Patent System in the United States, asking whether a globally standardized patent reward system is really beneficial to patent quality and administrative efficiency.