Patent Law Practice Center

America Invents: How the New Law Impacts Your Patent Practice

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

The Practising Law Institute will host a one-day program titled America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice. This event will be on Monday, September 26, 2011, and will take place live at PLI’s San Francisco Center in downtown San Francisco, California. The program will be webcast live over the Internet for all those who are unable to make it to the live location.

PLI has assembled a team of experienced patent practitioners who have closely followed the patent reform debate, and I am honored to be among those who will speak at this event. The faculty will discuss the realities of the new legislation and how the new law will immediately impact the patenting process for businesses and attorneys. If the e-mails we have exchanged furiously over the last several weeks in preparation are any indication this program will present a thorough and comprehensive review of the major aspects of the legislation. The plan is to dig deep and give the patent practitioner actionable information, recommendations and things to look out for. Legislative language will be examined carefully, as well as likely interpretations and problem areas that will almost certainly remain uncertain until the Federal Circuit and perhaps the Supreme Court weighs in.

Click here for the full IPWatchdog article and for more details about PLI’s upcoming program America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice.

What Patent Reform Means for Retailers: 4 Key Provisions of the America Invent Act

With the imminent enactment of the America Invents Act (AIA) into law, the patent experts are examining the legislation and helping us understand how it will impact the patent community at large.  R. David Donoghue, Partner at Holland & Knight and Practice Center Contributor, recently posted on his Retail Patent Litigation blog an article discussing how the bill will impact retailers and their supply chains.  He highlights four key provisions of the America Invents Act for retailers:

1. Smaller Patent Troll Suits: The most immediate impact on most retailers will be Section 19, limiting joinder in a single suit of unrelated parties. This is not the more extreme restrictions on venue or joinder that many had hoped for. But it will have some positive impact on patent troll litigation. For suits filed on or after the date of enactment, plaintiffs will only be able to join related parties in a single suit — for example, multiple manufacturers, distributors or resellers of an identical product. And while cases against unrelated parties could still be joined for discovery, they will not be able to be joined for trial. At first glance, this is not much of a barrier to entry for patent trolls. Very few defendants get to trial, and cases may still be consolidated for discovery purposes at the court’s discretion. Where a troll today could pay one $300 filing fee and sue 100 unrelated defendants, after enactment that same troll would have to file 100 suits and pay $30,000 in filing fees. $30,000, however, is dwarfed by the settlement demands in many cases. The hassle of filing the extra suits and the related filing fees, however, may be enough to prevent suits against some of the much smaller entities that almost always end up in these suits. And the requirement of separate suits will allow defendants a much greater ability to seek transfer to an appropriate venue. So, while this is not the sea change that many sought, it is a real benefit to retailers who are tired of being sued in Texas and want a better shot at transferring cases. This Section only applies to cases filed after enactment, not pending cases. So, existing cases will not be impacted. (more…)

Senate Votes 89-9 to Pass Patent Reform, No End to Fee Diversion

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

It looks like my prediction on Tuesday that the Senate would pass H.R. 1249, the America Invents Act, prior to President Obama’s much anticipated jobs and economy speech that begins at 7:00pm ET today, Thursday, September 8, 2011.  The Senate voted to pass H.R. 1249 and send the House version of the America Invents Act to the White House for President Obama’s signature by a vote of 89 to 9.  The Coburn Amendment, which would have once and for all put an end to fee diversion, was unsuccessful, being tabled by a vote of 50 to 48.

Beginning at 4:00pm ET the Senate started considering three separate amendments to H.R. 1249.  The passage of any would have required the legislation to ping back to the House of Representatives, but that was not to happen.

The first amendment considered was offered by Senator Sessions. The Sessions Amendment would have removed section 37 of the American Invents Act relating to the calculation of the 60-day period for applying for certain patent term extensions. At 4:10pm the roll call was run through for the first time with only 9 Senators having voted. Over the next 22 minutes 89 other Senators would make their way to the Senate floor to cast their votes. At 4:32pm the vote was announced; the Senate voted 51 to 47 to defeat the Sessions Amendment.

Click here to read the full IPWatchdog publication.

 

Patent Reform Update: Senate Voted To Invoke Cloture on Patent Reform

It was no surprise that the Senate voted to invoke cloture on the America Invents Act by 93-5 . The next step is a limited debate on the House Bill, H.R. 1249, and a final vote.   You can watch the Debate live today at 11:30AM.  Here are some reactions to yesterday’s Senate vote…

1. Senate Votes to Invoke Cloture on H.R. 1249 (Patent Docs)

2. Cloture Vote on Patent Reform Act; Public Collectively Reaches for Dictionary (Patent Baristas)

3. Senate Votes 93-5 to End Debate on Patent Reform, Vote Imminent (IPWatchdog)

4. Senate Backs Americs Invents Act 93-5 (Patents Post Grant)

5. Coons pleased with Senate’s vote to move patent reform bill forward (WGMD.COM)

6. Senate Vote Advances Patent Reform To Final Hurdle (Pharma Patents)

7. Some Hope for the Patent Reforms (PatentlyO)

 

Commissioner for Patents Robert Stoll Speaks at DLA Piper

Our friends at DLA Piper sent in this article discussing Commissioner for Patents Robert Stoll’s recent briefing on USPTO initiatives that took place  in DLA Piper’s  San Francisco Office.

At a recent lunch briefing in DLA Piper’s San Francisco office, Robert Stoll, Commissioner for Patents at the United States Patent and Trademark Office, addressed a group of IP lawyers regarding key initiatives to improve the USPTO’s efficiency and productivity.

Commissioner Stoll began by discussing the proposed America Invents Act, formerly the Patent Reform Act of 2011. A key provision, he explained, is a shift from the present “first-to-invent” regime to a “first-to-file” system which creates more certainty and helps all inventors, including the small inventor, while placing the USPTO in the same legal structure as other IP offices. He believes this change is an important step in creating global harmony in patent law, which he described as the least harmonized of the world’s intellectual property laws. Applicants will benefit from a streamlined application process when one standard is applied in all offices. This increases their global competitiveness and the strength of their patents. (more…)