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…)

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)


Patent Reform Update: Senate to Vote on Patent Reform Today

Early this evening, the Senate will vote on a cloture motion to preclude further debate on H.R. 1249. The vote can be viewed on C-span. While there are differences with H.R. 1249 and S.23, (see Patent Reform, Close Enough For Government Work?) most notably concerns over fee diversion, the Senate intends to adopt the House bill.  Check out below what the patent community is saying about tonight’s expected vote:

1. Patent Reform: Post Grant Review Musings (IPWatchdog)

2. Patent Reform: Final Countdown (Patents Post-Grant)

3. Congress Returns, Prepares To Fight Over Jobs, Tax Cuts, Patent Reform, Trade Deals, FAA Funding And More (People Unlike Us)

4.  Patent Reform 2011 Survey Results ( PatentlyO)

5.  Patent Reform Faces Final Hurdles in Senate (National Journal)

6.  Senate Cloture Vote on H.R. 1249 Scheduled for Tuesday (Patent Docs)

7.  Pressing the Patent Reform Panic Button ( Pharma Patents)

8. First To File v. First To Invent, By Abrams & Wagner (The Conglomerate)

9. Senate Set To Vote Yes On Patent Reform Bill (Law 360)



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…)