Patent Law Practice Center

America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice

On Monday, I attended PLI’s  program on the America Invents Act via webcast.  For those of you who were lucky enough to attend it, I’m sure you would agree  that the panel of experts delivered an extremely informative and concise program.  As I listened to each speaker deliver his/her presentation, it confirmed that the AIA is a major overhaul of the U.S. patent law.  It’s going to take quite some time for the patent community to really get a handle on all the nuances of the legislation.  With that being said, Monday’s esteemed panel did an excellent job breaking down the various provisions in AIA and helping to make sense of  how it pertains to your patent practice.  According to Gene Quinn, of IPWatchdog and Patent Center Contributor, PLI is considering reprising the presentation for an audience at PLI’s New York City location. Keep you posted.  

In the meantime, here are some highlights from Robert A. Armitage’s, of Eli Lilly and Company, presentation entitled “A New 102: Reform, Not Recodification”….

-AIA leaves only a 4-prong set of requirements for patentability-

1. Sufficient differentiation from prior public disclosures and earlier patent filings of others.
2. Sufficient disclosure to identify the claimed embodiments and to enable them to be put to a specific, practical, and substantial use.
3. Sufficient definiteness to differentiate subject matter claimed from subject matter that is not.
4. Sufficient concreteness to avoid excessively conceptual or otherwise abstract subject matter. (more…)

America Invents: A Simple Guide to Patent Reform, Part 1

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

[Yesterday] I spoke at the Practising Law Institute program on the America Invents Act. We had a good turnout in the room and an excellent turnout via webcast. The program was 4 hours long, and truthfully we could have gone on for at least several more hours without running out of material. For those who stayed online we ran long by about 20 minutes, and stayed talking with attendees and answering questions of live attendees for another 20 minutes. We are already talking about reprising the presentation for an audience at PLI’s New York City location on Seventh Avenue, so stay tuned.

There will be plenty of time to drill down on the particulars of the America Invents Act. The Act is dense, language choices from section to section in some places change and in other places remains the same, making you suspect that different terms must mean different things but the same term in different places has to mean the same thing, right? Our moderator, Denise Kettelberger (Faegre & Benson) said that patent attorneys should really read the Act about 10 times, which is really good advice.  Every time you read it you notice something a little different, and during the presentation of others today I found myself taking notes and looking up things in the Act with new understandings.  This is a major re-write of patent laws and not one that is at all simple.

Click here for the full IPWatchdog.

 

USPTO Issues Final Notice for Track I Fee-Based Prioritized Examination

On September 23, 2011, the USPTO issued a final notice, “Changes to Implement the Prioritized Examination Track (Track 1) of the Enhanced Examination Timing Control Procedures under the Leahy-Smith America Invents Act“.  According to the notice, starting today,September 26th, applicants can seek fee-based prioritized examination under the USPTO’s Track I program.  Courtenay Brinckerhoff, writer of PharmaPatents Blog and Partner at Foley & Lardner, posted an article setting forth details of the program including: applications eligible For Track I Examination, the filing requirements for Track I Examination, the on-going requirements for Track I Examination, the USPTO’s Track I goals and her lingering concerns. Here is an excerpt from her article:

As of September 26, 2011, applicants can seek fee-based prioritized examination under the USPTO’s Track I program. The September 23, 2011 Federal Register Notice sets forth the details of the program, which is largely identical to that previously set to take effect May 4, 2011, although the basic fee is higher. The USPTO decided not to implement the program in May because funding limitations required it to revise its hiring plans, and it did not believe that it could meet the Track I pendency goals with its current resources. While the USPTO’s funding situation has not improved, Track I is being offered now, in accordance with provisions of the Leahy-Smith America Invents Act.

Here is a link to the full article.

 

Deciphering the America Invents Act

President Obama’s signing of the America Invents Act on Friday, September 16th, has instigated an enormous amount of discussion in the patent community and rightly so.   The new law contains several provisions that will become effective within days, as well as others that will require rulemaking and time to implement.  Given the complexity of the legislation, I thought it would be helpful to search the web for analysis of the significant changes to U.S. Patent Law and how it will impact your patent practice.

1. America Invents Act Exercises “Con-Troll” Over Patent Litigation (IPWatchdog)

2. Patent Law Reform Update 2011 (COJK Law firm memo)

3. USPTO Post Grant Cheat Sheet (Patents Post Grant)

4. USPTO Fee Increase Effective September 26TH (Patent Law Practice Center)

5. Major reform of US patent law: the Leahy-Smith America Invents Act (Association of Corp Counsel) (more…)

USPTO Fee Increase Effective September 26TH

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the new 15% fee surcharge for patent application filings that will take effect on September 26th.

America Invents Act Raises USPTO Fees September 26th

Last Friday, President Obama signed the Leahy-Smith America Invents Act(AIA) into law. As discussed previously, one of the major changes that became effective immediately is the new standard for initiating inter partes patent reexamination. As the rush to beat the enactment deadline is now over, what other changes are on the immediate horizon at the USPTO?

Fee Increases.

For those with patent application filings of any kind due in the next few weeks, keep in mind that new 15% fee surcharge will take effect on September 26th (10th day after enactment). Note that the fees for filing a request for ex parte patent reexamination and inter partes patent reexamination remain unchanged. A schedule of the increased fees is found (here).

The USPTO has also posted a FAQ on the various provisions of the AIA. (here)