Patent Reform Update: Will the House Pass America Invents Act?

The U.S. Senate passed its version of patent reform, S. 23, in March, and on April 14, the House Judiciary Committee advanced H.R. 1249, sending the revised legislation to the House floor for further debate and a vote on the long-awaited bill’s final passage. The  House vote is expected some time next week.

While the Obama Administration endorsed the latest patent reform proposal last week, saying it would strengthen patent rights and finally grant the USPTO the power to set its fee rates and spend the fees it collects; heads of the U.S. House of Representatives Budget and Appropriations committees said Tuesday that proposed patent reform legislation would give the agency too much power.  Just how this weeks developments will effect next week’s expected House vote remains to be seen.

Check out the following blogs, video and more on the latest Patent Reform news. (more…)

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.


House Version Of Inter Partes Review & Wasted Time

Scott A. Mckeown, Partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant, sent in this article discussing to what extent inter partes reexamination will change if H.R. 1249, the House’s proposed patent reform legislation, is passed into law.

Inter Partes Review, 5 Months to a First Action?

Should the proposed patent reform legislation pass into law, inter partes reexamination will gradually cease to exist. In place of inter partes patent reexamination will be an entirely new mechanism known as Inter Partes Review.

Inter Partes Review will not be conducted by patent examiners of the Central Reexamination Unit, but instead by the Administrative Patent Judges of the Patent Trial & Appeal Board (now known as the BPAI). As the new proceeding is conducted by APJs, limited discovery practices will be provided. Beside these procedural changes, the substantive analysis remains largely the same. …at least in H.R. 1249. (more…)