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.

Patentee’s Arguments in Reexamination Create Intervening Rights Erasing $29.4 Million Verdict

Scott Daniels, Partner at Westerman, Hattori, Daniels & Adrian and Practice Center Contributor, sent in this article discussing Tuesday’s CAFC decision in the Marine Polymer Techs. v. HemCon case. In a decision that seems to encourage reexamination, the Court held that “intervening rights” apply to unamended claims based on statements made during reexamination.  Daniels discusses the history of the case and highlights the key points of the CAFC decision.

The CAFC panel decision [Tuesday] in Marine Polymer Techs. v. HemCon will do more to popularize reexamination than all the proselytizing by all the reexamination lawyers and bloggers ever could.  The Court held that an argument made by the patentee traversing a rejection in reexamination constituted a disclaimer of patented subject matter; this disclaimer triggered absolute intervening rights for the accused infringer under 35 U.S.C. §§ 252 and 307(b), thereby eliminating all damages for the period before the issuance of the reexamination certificate.  The Court also suggested that the accused infringer might also be protected by equitable intervening rights for the period after issuance of the reexamination certificate and sent the case back to the trial court for further fact-finding. (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.

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…)

What’s Wrong with Reexamination and How to Make it Better

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article discussing why reexamination should absolutely be considered when there is a strong case of invalidity that is built upon prior patents or publications and what the Patent Office is doing now with respect to reexamination.

Reexamination is a low-cost but seldom used alternative to litigation for determining the patentability of the claims in an issued patent. Despite what I write below, I am a fan of reexamination and I think that the fears associated with the process are largely unfounded.  Reexamination could and should be used more often than it is, and if you are a defendant in an ongoing patent infringement litigation and you are not simultaneously involved in bringing a reexamination you need to ask yourself why not!

Yes, the reexamination process is slow.  Yes, the reexamination process doesn’t work as well as it could or should.  Yes, reexamination it adds extra cost.  But the statistics don’t lie.  In the right case reexamination is extremely effective.  Unfortunately, some patent litigators counsel clients to steer clear of reexamination.  This may be good advice, or it might just be because the litigator isn’t familiar with reexamination, or in some cases because you recommend what you know and do.  The old saying — if you are a hammer all the world looks like a nail — comes to mind.  So despite what follows relating to how Congress could and should make reexamination better, if you are on the wrong side of a patent infringement litigation you really should get some impartial advice about the pros and cons of pursuing a reexamination strategy before writing it off as a bad idea.

Click here to read the full IPWatchdog publication.