Patent Law Practice Center

USPTO Proposes Overhaul To Patent Reexamination Proceedings

On Monday, April 25, 2011, the USPTO published a proposal in the Federal Register enumerating proposed changes being considered by the agency to streamline the proceedings governing ex parte and inter partes reexamination proceedings.  Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the proposals.

June Meeting to Consider Proposed Changes

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here). (more…)

Patent Reform Update: House Debates Patent Reform

On Wednesday, Representative Lamar Smith, introduced th House’s version of a patent reform bill to the House of Representatives.  The House bill is largely similar to the Senate Bill S. 23. passed earlier this month.  However, there are a few changes in the House bill that some industry representatives oppose, particulary on prior use rights and post-grant reviews.  Will this opposition reignite debate over patent reform?  Here is what the blogosphere has to say about the House’s patent reform bill and yesterday’s hearing…..

1.  Patent Overhaul Unveiled in U.S. House of Representatives (Bloomberg)

2. Patent Reform Introduced in House (Reuters)

3.  Sensenbrenner to Kappos: Prior User Rights is Poison Pill (IPWatchdog)

4. House Weighs in with its Version of Patent Reform (Morrison Foerster)

5.  House patent reform bill sparks debate (EEtimes)

6.  Deep Divisions Between Firms Large and Small Remain Over House Patent Reform Bill (BroadbandBreakfast.com)

7.  BIO Commends Launch of House Patent Reform Process (Sun Herald)

8.  Patent Reform 2011:  House of Representatives Bill No. H.R. 1249 (PatentlyO)

America Invents Act: First to Invent v. First to File System

On March 30, 2011, the House is scheduled to debate The America Invents Act, the patent reform bill passed by the Senate 99 to 5 on March 8, 2011.  There are some differences in the House patent reform bill from Senate bill S.23, but the provision that has undoubtedly generated the most debate, that is the switch from a first-to-invent to a first-to-file system, remains in the House’s proposed legislation. I recently listened to a One-Hour Briefing in which Allan A. Fanucci, Partner at  Winston & Strawn, discussed the implementation of US Patent Laws under the current 35 U.S.C. s 102(a) as compared to what the statutory bars will be under the first to file system. Here are some highlights from the briefing…

First to File (proposed for US)

• The first party to file has the opportunity to obtain the patent
• The earlier party’s application becomes prior art to all later applicants both for novelty and obviousness (or lack of an inventive step)
• Exception: prior application was derived from the later filer
• While Interferences are being discontinued except for derivation, documenting prior inventions should be important in showing that invention was not derived from others

(more…)

Patent Reform Takes A Big Step Forward As The Senate Passes The America Invents Act

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, along with colleagues Courtenay C. Brinckerhoff and Liane M. Peterson, sent in this alert highlighting the key provisions of The America Invents Act.

On March 8, 2011, U.S. patent reform moved one step closer towards becoming a reality when the Senate passed the America Invents Act (S. 23) in a bipartisan, 95-5 vote. The bill includes some modification to the “first-to-file system” and removes the damages and venue provisions that were present in earlier versions of the bill.

Now the House of Representatives will have to craft its own version of patent reform, which is expected to have at least some differences vis-à-vis the Senate bill. If and when the House approves its patent reform bill, House and Senate leadership will have to reach a compromise. Although the House is expected to vote in support of a compromise bill, final passage could be blocked by a late-stage “hold” in the Senate. Thus, patent reform likely still has a long road ahead. (more…)

Patent Reform Update: Yays and Nays to Senate Passing America Invents Act

On Tuesday, the Senate voted 95-5 to pass the America Invents Act aka the Patent Reform Act.  According to the three main sponsors of the bill, senators Pat Leahy (D-VT), Charles Grassley (R-IA), and Jon Kyl (R-AZ), the main objective of this legislation is to eliminate the backlog of unexamined patents. Whether the amended S. 23 bill will accomplish that goal remains to be seen.  Will the House approve patent reform, either along the lines of the amended S.23 or something close to it is also questionable?  Here is what the blogosphere has to say about the America Invents Act and whether or not the House is likely to approve patent reform….

1.  Senate Passes Patent Overhaul In 95-5 Vote (Law 360)

2.   Senate Passes Bill to Change Patent System and Pricing (New York Times)

3.  Patent Reform Passed in Senate: House Likely to Introduce Bill this Month (PatentlyO)

4.  Leahy patent bill: Litigation, not innovation (via The Hill)

5.  Patent Reform Act clears the Senate (The Hill)

6.  Patent Reform Likely to Benefit Industry Giants More Than Start-Ups (GEN)

7.  Pharma and bio sectors applaud US patent reform (PharmaTimes)