Patent Law Practice Center

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…)

USPTO Fee Increase Effective September 26TH

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the new 15% fee surcharge for patent application filings that will take effect on September 26th.

America Invents Act Raises USPTO Fees September 26th

Last Friday, President Obama signed the Leahy-Smith America Invents Act(AIA) into law. As discussed previously, one of the major changes that became effective immediately is the new standard for initiating inter partes patent reexamination. As the rush to beat the enactment deadline is now over, what other changes are on the immediate horizon at the USPTO?

Fee Increases.

For those with patent application filings of any kind due in the next few weeks, keep in mind that new 15% fee surcharge will take effect on September 26th (10th day after enactment). Note that the fees for filing a request for ex parte patent reexamination and inter partes patent reexamination remain unchanged. A schedule of the increased fees is found (here).

The USPTO has also posted a FAQ on the various provisions of the AIA. (here)

 

 

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…)

Unwary Litigants to Lose USPTO Review Option Under Patent Reform

5 Tips for Passing the Patent Bar Exam

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article wherein he provides five tips that should help you develop a personal strategy for tackling the Patent Bar Exam.

In order to become a patent attorney or patent agent and represent inventors or corporations before the United States Patent and Trademark Office you first need the proper scientific training and then you need to take and pass the Patent Bar Exam, sometimes referred to as the Patent Agents Exam or Patent Registration Exam.  The test, which is administered via computer, is an open book exam, but the Manual of Patent Examining Procedures (MPEP) is like no other book you have ever seen. It is sometimes random and haphazard, it is redundant, and it is exceptionally boring. Nevertheless, the MPEP can be your life line. The biggest mistake that anyone could make is that an open book exam is not terribly difficult. Open book exams are more difficult than closed book exams because the tester can ask more pointed and specific questions than could reasonably be asked in a closed book exam. Familiarity with the MPEP is essential to success.

Since March of 2000, I have been a principal lecturer in the PLI Patent Bar Review Course.  This means I have devoted a good portion of my professional life to working with students interested in passing the Patent Bar Exam. As a result, I have come up with a number of tips that should help you develop a personal strategy for tackling the Patent Exam.  Do remember though that any strategies you are going to employ should not be first unveiled on exam day.  Weave these and any other strategies you want to develop into your exam preparation for maximum success on exam day.

Click here to read the full IPWatchdog publication.