Posts Tagged ‘patent reform act’

Patent Reform Bill Passes the Senate an on its way to the President

Friday, 09 September, 2011 09:14 Written by Mark Malek 2 Comments

By: Mark R. Malek

The United States Senate has now passed the American Invents Act by a vote of 89 to 9.  See Gene Quinn’s recent article on IPWatchdog.com for some great insight on how the vote went.  I do agree with Gene that this version of the patent reform bill is not a great one.  My biggest gripe is that the bill continues to divert fees away from the patent office.

There was a point during this process when I thought that fee diversion was finally over.  I wrote an article back in February when PTO Director David Kappos announced President Obama’s 2012 budget.  The great news during that announcement was that the budget provided $2.71 Billion for the PTO.  It is not a coincidence that the PTO was budgeted to raise $2.71 Billion in fees this year.  In other words, the PTO was pulling its own weight as far as the federal budget was concerned.  Tax payers did not feel any burden by the PTO.  As we all know, any thought that the PTO could keep the fees that it generated in order to enhance its efficiency was over quickly when the folks that we trust to run our country could not agree on a budget, and almost shut down the entire country.  Here’s my other article about that disaster, and about how the brilliance of DC cost the PTO a big cut in funding.  Aaron Thalwitzer also wrote a great article about how the budget crisis screwed some of the PTO improvements.

I just don’t get it.  What exactly has this patent reform accomplished?  I keep hearing that this will create jobs, but the only jobs that I can almost guarantee will be created is going to be for patent attorneys!  With the first to file system that is imminent, I plan on getting even busier with new patent filings.  Gone are the days when the inventor can give the market a quick test before filing.   Gone is the time to try to tweak your invention prior to filing the patent application.  Now is the time to file early and file often.

Let me ask this other question of Congress – how is it that innovation will grow and patents will get issued quicker if you have stripped the Patent Office of the funding it needs to hire more Examiners and enhance their technology?  If the fundamental problem of lengthy patent pendency remains, then how are more jobs going to be created?  Seriously, these folks just find a catch phrase and stick with it.  “Patent Reform with create jobs” is the most ridiculous one that I have heard to date.

 

Patent Reform Act of 2011 – Part 5 – Remaining Topics

Sunday, 20 March, 2011 06:57 Written by Scott Nyman 0 Comments

By Scott Nyman

During the past few articles, I have been discussing different aspects of the Patent Reform Act of 2011 as part of a series of articles. As a refresher, the Senate recently voted to pass the Act with a 95-5 vote. Now, a sister bill is currently making its way through The House of Representatives.

The Patent Reform Act of 2011 proposes new policies to reform (for better or worse, depending on your view) the way the U.S. examines, allows, and enforces patents. The U.S. Senate and House bills are now being called the America Invents Act of 2011. For the sake of consistency, I will continue to refer to the bill as the Patent Reform Act of 2011 in these articles.

In the preceding articles of this series, I have covered many of the changes proposed by the Patent Reform Act of 2011. Today, I will cover the remaining provision of the Patent Reform Act of 2011. Please check out my previous articles on TacticalIP for the complete coverage of the Patent Reform Act of 2011. Of course, I will continue to follow the progress of the Patent Reform Act as it makes its way through the House and possibly into law.

The Patent Reform Act of 2011 includes a few miscellaneous provisions that affect how patents are examined and enforced. Due to the large number of false patent marking cases filed in the recent years, the Patent Reform Act of 2011 proposes to limit the parties that may file such cases. False marking occurs when a manufacturer or party lists a patent number on a product or packaging without the valid authority form the owner of the patent. Under the proposed Act, parties with the right to sue would now include only competitors that can prove competitive injury and the U.S. government.

A new provision is also included to assist corporation in filing oaths for substitute inventor, when another inventor is uncooperative.

Also included as a provision in the Patent Reform Act of 2011, failure to set forth the best mode for carrying out an invention would no longer provide grounds for invalidating a patent. The best mode requirement creates a statutory bargained-for-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention. (251 F.3d 955, 963) Under the proposed reform, the duty to ensure the best mode requirements have been met would lie solely on the USPTO during examination.

Finally, the Patent Reform Act of 2011 proposes allowing the USPTO to adjust its own fees. However, this new authority would be limited to making adjustments in a way that the aggregate fees collected do not exceed the estimated operating costs of the USPTO. Seeing as how the USPTO is one of the few government entities that actually turn a profit (although they are not allowed to keep that profit), this proposed reform has been need for a long time.

Also, included in this proposed fee setting authority is the creation of a new “micro entity” for a special class of applicants, providing further reduced fees. Too bad most of the cost of drafting and successfully prosecuting a patent isn’t in the filing fees.

Thanks you to all my readers who have been following this series. If you enjoyed these articles, or if you have any suggestions for a future series, hit up the comments.

PATENT REFORM ACT OF 2011 – PART 4 – THIRD PARTY CHALLENGES

Thursday, 17 March, 2011 11:12 Written by Scott Nyman 0 Comments

By Scott Nyman

During the past few articles, I have been discussing different aspects of the Patent Reform Act of 2011 as part of a series of articles. As a refresher, the Senate recently voted to pass the Act with a 95-5 vote. Now, a sister bill is currently making its way through The House of Representatives.

The Patent Reform Act of 2011 proposes new policies to reform (for better or worse, depending on your view) the way the U.S. examines, allows, and enforces patents. The U.S. Senate and House bills are now being called the America Invents Act of 2011. For the sake of consistency, I will continue to refer to the bill as the Patent Reform Act of 2011 in these articles.

Today, I will cover the provision of the Patent Reform Act of 2011 as it relates to third party rights. In the next article, I will finish up the series by covering the remaining topics of proposed reform in the Act. Of course, I will continue to follow the progress of the Patent Reform Act as it makes its way through the House and possibly into law.

The Patent Reform Act of 2011 includes new provisions that affect how a third party may challenge a patent or application through the USPTO. The new provisions include avenues for a third party to present a challenge during the examination and after issuance of a patent. During examination, the Patent Reform Act of 2011 proposes allowing a third party use Pre-Issuance Third-Party Submissions to challenge an application. After a patent has been issued, a third party may challenge the patent via a Third-Party Requested Post Grant Review or Inter Partes Review Proceedings. With the inclusion of these new challenges available to third parties, the Patent Reform Act of 2011 will effectively expand the possible influence of the third party.

With the new Pre-Issuance Third-Party Submissions provision, a third party would be able to submit previously published patents, applications, and other publications to the USPTO to be considered by the Examiner while examining the application for patentability. The third party may also include a description of how the submitted publications are relevant to the examination of the application.

The third party, the new third wheel.

The Third-Party Requested Post Grant Review would permit a third party to challenge the validity of a claim in an issued patent. This proposed proceeding shares a number of similarities with the reexamination proceedings in existence under the current patent system. However, under the proposed Third-Party Post Grant Review, a third party must request the review within nine months of issuance of a patent.

After the nine month period for Post Grant Review has expired, a third party may file for an Inter Partes Review Proceeding under the proposed provisions of the Patent Reform Act of 2011. This new inter partes proceeding would replace the inter partes reexamination of the current system, limiting the review to considering only novelty and obviousness issues.

A Walk through the Patent Reform Act of 2011 – Part 2 – First-to-File

Sunday, 27 February, 2011 12:20 Written by Scott Nyman 12 Comments

By Scott Nyman

In my last article, I discussed how I intend to cover different aspects of the Patent Reform Act of 2011 over a series of articles. Presently in Congress, as Senate Bill 23, the Patent Reform Act of 2011 is aimed at reforming the way the U.S. examines, allows, and enforces patents.

Without any further introduction, the first area of change in the Patent Reform Act of 2011 deals with inventor priority. More specifically, the Patent Reform Act of 2011 is making a step closer to the “first-to-file” system, bearing a closer resemblance to the system used in Europe today.

With the U.S. patent system, as it presently exists, inventive priority is decided on the basis of which applicant invented first. This system is commonly referred to as the “first-to-invent” system. In most other areas of the world, such as used by the countries of Europe, the inventive priority is decided largely on which inventor filed his or her patent application first. This system, used by the majority of the world, is commonly referred to as the “first-to-file” system.

Under the present U.S. ‘first-to-invent” system, an inventor may claim priority after having satisfied two conditions: 1) conception and invention, and 2) reduction to practice. Once an inventor has diligently reduced his invention to practice, such as by building a prototype or filing a provisional application, the inventor may use the date on which the invention was conceived as his priority date. In a contest of priority, called an interference proceeding, an inventor that believes he or she should have priority may request an administrative hearing before a panel of judges on the Board of Patent Appeals and Interferences. In these proceedings, a second applicant must overcome the presumption that the first applicant to file was also the first to invent.  Due to the amount of evidence and time involved with swearing behind prior art in interference proceedings, or proving that they conceived the invention first, costs and legal fees can add up very quickly.

In non-U.S. “first-to-file” systems, the first applicant to file a patent applicant will have priority over all subsequent applicants, regardless of who conceived the invention first. That’s it.

As proposed in the Patent Reform Act of 2011, patent applicants will now be given an “effective filing date,” from which priority will be judged, with consideration to whether prior art was available before that date. This “effective filing date” will also be used to determine whether the invention would be obvious to those in the art through a combination of prior art references.

Also, under the Patent Reform Act of 2011, the U.S. patent system may do away with interference proceedings. In its place, the Act has created “derivation proceedings,” wherein the non-applicant would allege that an application was derived from another inventor’s work (which I would assume would be the alleging non-applicant).

While the proposed changes will likely eliminate some of the delays and expenses associated with the “first-to-invent” system, I am not totally convinced that the change will be a win for American inventors. The new rule may have the effect of favoring larger companies, or at least inventors with greater financial stability, which may fire off applications. The garage inventor that has to save up, just to afford the costs associated with acquiring a patent on his invention, may now be at a greater disadvantage than the well financed companies with intellectual property budgets in the millions of dollars.

What is your take on these proposed changes to U.S. patent system determination of priority? Sound off in the comments.

Patent Reform Act Moving Forward

Sunday, 07 March, 2010 10:38 Written by Mark Malek 0 Comments

Gravatar Iconby Mark Malek

Well, I’ve heard this one before – the Patent Reform Act is moving forward.  This is something that has been, allegedly, moving forward for years.   The article that I read noted that patent reform has been introduced in each of the last three Congresses.  Does this one have a chance of passing?  There’s really no telling.

Senators Leahy and Hatch have been big proponents of patent reform over the years.  I appreciate that they realize the importance of intellectual property.  Over the years, the various versions of the patent reform act have attempted to address issues such as moving to a “first to file” system, damages, and third party comments on pending patent applications.  This proposed bill addresses those issues, as well as others allowing the U.S. Patent and Trademark Office to set fees in an attempt to address the backlog problem.

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