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…)

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…)

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)

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)

The America Invents Act of 2011: Reform or Regression?

As most of us in the patent community know, this week the Senate is debating the “Patent Reform Bill 2011” aka “The America Invents Act of 2011”.  Based on the information being circulated in the blogosphere, it appears Patent Reform is likely to be a reality.  Whether that is a good or bad thing is highly debatable.  I have compiled a list of blog posts from the last 48 hours that highlight what has occurred during the Senate debate thus far and what the various players have to say about the legislation.  In no particular order, here they are….

1.  Senate votes to strip down patent reform bill (Reuters)

2.  Senate debates patent reform as more voices weigh in (Washington Post)

3.  Patent Reform Gaining Steam, Debate Continues in U.S. Senate (IPWatchdog)

4.  Patent Reform – An Important Amendment to the Bill (Patently-O)

5.  Senate Votes on Two Patent Reform Amendments (Senatus)

6.  Patent Reform Amendments Introduced (via Patents Post Grant)

7.  Delivering innovation and jobs through patent reform (The Hill’s Congress Blog)