Proper Business Method Patent Challenges Under the America Invents Act?
Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing how the “Transitional Program for Covered Business Method Patents” provision that is included in the pending patent reform legislation may impact technology companies.
Patent Reform Provisions to Impact Technology Companies?
The race to the USPTO door may start very shortly for those defendants charged with infringement of a “business method patent.”
Patent reform legislation is ostensibly poised for a September 2011 enactment. The current version of the legislation (H.R. 1249) includes a provision entitled “Transitional Program for Covered Business Method Patents.” The provision essentially provides post grant review (as defined in the legislation) for patents that were issued prior to enactment. This provision is of a limited time, 8 years, and can only be used if actually sued or charged with infringement of a covered business method patent. (more…)
PATENT REFORM, CLOSE ENOUGH FOR GOVERNMENT WORK?
Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the status of patent reform.
Further Fee Diversion Wrangling Unlikely
As the saying goes, “almost” only counts in horseshoes and hand grenades. Recent events suggest that patent reform can now be added to the list.
Last week, H.R. 1249 was passed by the House. A copy of the bill, with all amendments, is found (here). A helpful mark-up illustrating the differences between the Senate Bill (S.23) and H.R. 1249 is found (here). (Thanks to Brad Pedersen of Patterson Thuente Christensen & Pedersen for the mark-up). (more…)
06.28.11 | America Invents Act, Patent Reform | Stefanie Levine
Patent Reform: House Passes America Invents Act 304-117
The following post comes courtesy of Gene Quinn, of IPWatchdog and Practice Center Contributor.
At approximately 5:50pm [Thursday] the United States House of Representatives passed H.R. 1249, which is known as the America Invents Act, by a vote of 304-117. This bill differs from the Senate version of patent reform, S. 23, so there will be no bill going to the desk of President Obama just yet. There are important differences between the two bills, chief among them is funding for the United States Patent and Trademark Office. The bill passed by the Senate put an end to the practice of fee diversion, which occurs when the Congress appropriates the USPTO less than they collect in fees. The excess in the fees collected from users of the USPTO then go to the federal government as general revenues and are used for purposes other than the operation of the United States Patent and Trademark Office.
Indeed, now the fight will go back to the Senate where Senators will be asked to swallow the changes adopted by the House of Representatives, which seems unlikely. Senator Patrick Leahy (D-VT) and Congressman Lamar Smith (R-TX), who are the respective champions of the bills in the two chambers will likely want to find compromise language that can pass both the House and the Senate. I have been told that a formal Conference on the bill is unlikely, which would mean that the Senate would need to hammer out language acceptable to the Senate while also being acceptable to the House.
Click here to read the full IPWatchdog publication.
06.24.11 | America Invents Act, Patent Reform | Stefanie Levine
PATENT REFORM–THE REMIX
Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article updating us on the status of H.R. 1249 aka “The America Invents Act” aka “Leahy-Smith America Invents Act”.
Significant Amendments Targeted for H.R. 1249
Hold up, wait a minute.
The America Invents Act has been seemingly remixed and re-released as the “Leahy-Smith America Invents Act.” All Republicans, throw your hands up, all Democrats, throw your hands up…
With the House now moving to floor debate of H.R. 1249, amendment proposals have come flying from all directions. Not surprisingly, some of the proposals aim to strike PTO fee setting authority, the end of fee diversion, as well as the first to file provision. Should these amendments be adopted, the bill would be killed. Another amendment, introduced by John Conyers (D-MI) seeks to strike everything but PTO funding (including the Detroit Office!). (more…)
06.17.11 | Patent Reform | Stefanie Levine
Patent Reform Update: Summer Debate Ahead For America Invents Act
Although we haven’t heard much about Patent Reform in the last few weeks, Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, discusses below why he believes we will still see some form of patent reform in 2011.
Overhaul to U.S Patent System Awaits Further Debate
There has been true progress toward enacting patent reform in 2011. First, in March,S.23 was shepherded through the Senate in a matter of weeks by Senator Leahy. Next the House took up H.R. 1249. The House companion bill includes much of the same, if not identical provisions to S.23. A few weeks back H.R. 1249 was refined by Manager Amendment and voted out of committee for floor debate.
With the House now back in session, H.R. 1249 will now await its turn in the legislative queue. An early summer debate (mid-late June) seems likely based upon the current House calendar. During this debate, key provisions of the bill will likely be attacked anew, further amendments have been promised.
Prospects for bill passage, at least in some form, still seem very high. With the current PTO budget crunch, fee diversion will likely be a significant rallying cry for suporters.
Stay Tuned.
05.16.11 | Patent Reform | Stefanie Levine
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08.16.11 | America Invents Act, Business Method Patents, Patent Reform, posts | Stefanie Levine