Patent Law Practice Center

America Invents: A Simple Guide to Patent Reform, Part 2

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

I have done quite a bit of writing about the America Invents Act, but I have been a bit derelict in providing the sequel to America Invents: A Simple Guide to Patent Reform, Part 1. Part of the reason, if not the entirety of the reason, is that the major parts of the American Invents Act that remain are anything but simple.

I was speaking with John White via telephone yesterday about the America Invents Act.  Yes, John and I are thoroughly immersed in this legislation and coming up with wrinkle after wrinkle that you probably never thought about.  Fun I know, but that is what two wild, crazy and tremendously charismatic patent attorneys talk about!  In any event, I told him I was having difficulty and asked him — how do you describe prior user rights, post-grant review and supplemental examination simply?  His response: “You don’t.”  We went on to talk about how first to file isn’t all that simple either, although the name suggests otherwise.  This thing, the monstrosity that is the America Invents Act, will be a full employment act for lawyers!  But when is it ever good for clients when it is good for the attorneys?

In any event, on this note I embark upon Part 2, which will seek to make sense of prior user rights, post-grant review, preissuance submission and patentability changes. This will leave inter partes review, supplemental examination and derivation proceedings for the finale — Part 3.  I will endeavor to describe these in the most straight forward way possible, but I am going to completely punt on Section 18 as it pertains to business methods and post-grant review, at least for now.  I just see no way to explain that in a “simple” way.  Notwithstanding, look for an article on Section 18 soon (a relative term I know), along with an article about specific peculiarities and likely unintended consequences of the Act.

Click here for Gene Quinn’s full article on IPWatchdog.

Deciphering the America Invents Act

President Obama’s signing of the America Invents Act on Friday, September 16th, has instigated an enormous amount of discussion in the patent community and rightly so.   The new law contains several provisions that will become effective within days, as well as others that will require rulemaking and time to implement.  Given the complexity of the legislation, I thought it would be helpful to search the web for analysis of the significant changes to U.S. Patent Law and how it will impact your patent practice.

1. America Invents Act Exercises “Con-Troll” Over Patent Litigation (IPWatchdog)

2. Patent Law Reform Update 2011 (COJK Law firm memo)

3. USPTO Post Grant Cheat Sheet (Patents Post Grant)

4. USPTO Fee Increase Effective September 26TH (Patent Law Practice Center)

5. Major reform of US patent law: the Leahy-Smith America Invents Act (Association of Corp Counsel) (more…)

America Invents: How the New Law Impacts Your Patent Practice

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

The Practising Law Institute will host a one-day program titled America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice. This event will be on Monday, September 26, 2011, and will take place live at PLI’s San Francisco Center in downtown San Francisco, California. The program will be webcast live over the Internet for all those who are unable to make it to the live location.

PLI has assembled a team of experienced patent practitioners who have closely followed the patent reform debate, and I am honored to be among those who will speak at this event. The faculty will discuss the realities of the new legislation and how the new law will immediately impact the patenting process for businesses and attorneys. If the e-mails we have exchanged furiously over the last several weeks in preparation are any indication this program will present a thorough and comprehensive review of the major aspects of the legislation. The plan is to dig deep and give the patent practitioner actionable information, recommendations and things to look out for. Legislative language will be examined carefully, as well as likely interpretations and problem areas that will almost certainly remain uncertain until the Federal Circuit and perhaps the Supreme Court weighs in.

Click here for the full IPWatchdog article and for more details about PLI’s upcoming program America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice.

What Patent Reform Means for Retailers: 4 Key Provisions of the America Invent Act

With the imminent enactment of the America Invents Act (AIA) into law, the patent experts are examining the legislation and helping us understand how it will impact the patent community at large.  R. David Donoghue, Partner at Holland & Knight and Practice Center Contributor, recently posted on his Retail Patent Litigation blog an article discussing how the bill will impact retailers and their supply chains.  He highlights four key provisions of the America Invents Act for retailers:

1. Smaller Patent Troll Suits: The most immediate impact on most retailers will be Section 19, limiting joinder in a single suit of unrelated parties. This is not the more extreme restrictions on venue or joinder that many had hoped for. But it will have some positive impact on patent troll litigation. For suits filed on or after the date of enactment, plaintiffs will only be able to join related parties in a single suit — for example, multiple manufacturers, distributors or resellers of an identical product. And while cases against unrelated parties could still be joined for discovery, they will not be able to be joined for trial. At first glance, this is not much of a barrier to entry for patent trolls. Very few defendants get to trial, and cases may still be consolidated for discovery purposes at the court’s discretion. Where a troll today could pay one $300 filing fee and sue 100 unrelated defendants, after enactment that same troll would have to file 100 suits and pay $30,000 in filing fees. $30,000, however, is dwarfed by the settlement demands in many cases. The hassle of filing the extra suits and the related filing fees, however, may be enough to prevent suits against some of the much smaller entities that almost always end up in these suits. And the requirement of separate suits will allow defendants a much greater ability to seek transfer to an appropriate venue. So, while this is not the sea change that many sought, it is a real benefit to retailers who are tired of being sued in Texas and want a better shot at transferring cases. This Section only applies to cases filed after enactment, not pending cases. So, existing cases will not be impacted. (more…)

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 Foley.com/patentreform.

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…)