Senate Passes House Patent Reform Bill (H.R. 1249)-President Now Expected to Sign!

The United States Senate passed the America Invents Act on September 8, 2011 by a vote of 89-9.  The bill will now be forwarded on to the White House for President Obama’s signature, upon which the law is officially enacted. Our friends at Foley & Lardner sent in this article highlighting key changes to the U.S. patent system that will be brought about by the Leahy-Smith America Invents Act.

On September 8, 2011, by a vote of 89-9, the Senate approved the House version of the Leahy-Smith America Invents Act (H.R. 1249), leaving only President Obama’s signature as the final step to make patent reform a reality (he has already stated he is ready to sign this bill). Prior to the final vote, the Senate voted to reject or table all amendments, avoiding the need to send the bill back to the House for consideration. This vote means that the final text of the new law is that found in H.R. 1249 as passed by the House on June 23, 2011. Further information on the Act can be found at

The Leahy-Smith America Invents Act makes the most sweeping changes to U.S. patent law in many decades, including moving the U.S. towards a first-to-file system, expanding prior user rights as a defense to infringement, eliminating interference proceedings, and creating new USPTO proceedings for post-grant review. While many provisions of the law will not take effect for at least one year after the date of enactment, several key provisions have an immediate effect, and many provisions will have a retroactive effect after their phase-in. (See Foley’s PharmaPatentsBlog for a more detailed review of different effective dates). (more…)

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 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…)

Europe’s Approach To Patentability Of Business Methods

This post comes courtesy of our friends at DLA Piper, George Godar (Partner in DLA Piper UK’s London office in the Technology, Media and Commercial group) and David Alberti (Partner in DLA Piper’s Silicon Valley office. He  focuses on patent litigation, prosecution and counseling). 

The issues raised in the recent United States Supreme Court Bilski decision are not exclusive to the US. Europe has been considering these issues for years and has still not reached a conclusion accepted by all signatory countries to the European Patent Convention. 

Under the EPC, rules and methods for performing mental acts and doing business, or a program for a computer, are excluded from patent protection if the claims of the patent relate to that thing as such. The European Patent Office (EPO), and national courts, have wrestled with these exclusions. The solutions they have reached may be pragmatic but are not always mutually consistent.   (more…)

Bilski’s Impact on Finance Industry Patents

The following was written by Dale Lazar (Partner at DLA Piper and one of our newest Practice Center Contributor’s)  and Jim Heintz (Partner at DLA Piper).

When the Supreme Court announced it would hear the Bilski case, many speculated that the Court would use the opportunity to declare an end to patents on business methods. This did not happen. However, the Court did find that Bilski’s claims to a method for hedging risk were not the kind of invention for which a patent should be granted.

What does this mean for other finance industry patents and patent applications? Certain types of business method patents may be safe for now – but warning signs point to hazards down the road.

Most would agree that the claims of Bilski’s patent application are directed toward a business method. Two aspects of the Supreme Court’s Bilski decision are particularly important to the issue of whether finance industry inventions can be protected by patents: (1) business methods are not categorically excluded from patent protection; but (2) Bilski’s claims to methods for hedging risk are unpatentable because they claim an “abstract idea.” (more…)