Patent Law Practice Center

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…)

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…)

Foley & Lardner: Senate Introduces Patent Reform Act of 2011

On Tuesday, the Senate introduced the Patent Reform Act of 2011.  While the latest version is similar to previous patent reform bills, there are some significant changes made in the 2011 proposed legislation.  Our friends at Foley & Lardner sent in this alert discussing the new bill and how the House plans to address patent reform in 2011.

On January 25, 2011, Sens. Patrick Leahy (D-Vt.), Orrin Hatch (R-Utah), and Chuck Grassley (R-Iowa) introduced the latest bill on patent reform legislation—the Patent Reform Act of 2011.  According to Sen. Leahy, the new legislation is based on prior legislation introduced during the 109^thCongress, as well as compromises reached in March 2010 (the Managers’ Amendment to S. 515). A January 20, 2011 press release on Sen. Leahy’s Web site states, “[p]romoting economic growth continues to be a top priority for both Democrats and Republicans, and patent reform is part of that effort.” When introducing the bill, Sen. Leahy explained that the new legislation is intended to accomplish three primary goals: (1) transition to a first-to-file system; (2) improve patent quality; and (3) provide more certainty in litigation. The Act also includes provisions to limit standing and damages in false patent marking actions. However, Sen. Leahy did not directly address how he intends to resolve key differences with the House that carry over from last year’s stalled bill (S. 515), which contains many of the same provisions as the new bill. Meanwhile, the House has announced a new hearing that it will conduct on the link between patent reform and job creation, suggesting that it intends to obtain more input before considering legislative changes. Several of the key provisions of the recently introduced Senate bill are discussed in more detail below. (more…)