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IP Update: Patent Law Reform 2011

September 29, 2011

Related Professionals: Barker, M. Paul , Hill, David W., Tridico Ph.D., Anthony C.

IP Update

On Friday, September 16, 2011, President Obama signed the America Invents Act at a signing ceremony at Thomas Jefferson High School for Science and Technology in Alexandria, VA. The U.S. Senate voted on September 8, 2011, to reform U.S. patent laws by approving the Leahy-Smith America Invents Act, with identical provisions to H.R. 1249, which was approved by the House of Representatives on June 23, 2011.

The legislation passed by the House and Senate makes significant changes to the U.S. patent system, including conversion to a first-inventor-to-file system, introduction of enhanced post-grant review procedures conducted in the USPTO, and redefinition of the parameters of USPTO funding. The bill also addresses preissuance submissions by third parties; USPTO fee-setting authority; supplemental examination, which appears relevant to the issue of inequitable conduct; reissue, which also appears relevant to the issue of inequitable conduct; micro entity fees; false marking; tax strategy patents; elimination of the best mode defense (although the best mode requirement remains in 35 U.S.C. § 112); special post-grant review for business method patents; USPTO satellite offices; creation of a USPTO ombudsman; residency for Federal Circuit judges; and USPTO authority to prioritize examination.

Many provisions will not be effective for a substantial period of time following enactment of the legislation, and the USPTO will need to promulgate regulations implementing the legislation. A number of important changes will take effect upon enactment. Notably, the threshold for instituting inter partes reexamination will change. The new threshold requires a finding “that there is a reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged in the request.” Additionally, the Federal Circuit will serve as the only appeal route from ex parte reexamination decisions. The legislation also includes substantial changes to the false marking statute, which will apply to cases pending on the date of enactment, as well as cases filed on or after that date. Upon enactment, all fees will increase by 15% 10 days after enactment, the USPTO could offer a new micro entity discount (75% discount) for certain fees, and Track I prioritized examination will be available for $4,800. Patent challengers who file proceedings on or after the date of enactment may no longer rely on best mode as a defense to infringement. Also, on or after the date of enactment, patent holders may use virtual marking (through a website). When enacted, the legislation also makes immediate changes to patent applications directed to tax strategies and human organisms. The legislation also includes a change that will apply in certain instances to the method of calculating the due date for a patent term extension application based on FDA approval.

For the effective date of provisions in the Act, please click here.

To view the USPTO webpage dedicated to implementation information, please click here.

Finnegan follows developing news on patent reform and the America Invents Act. To sign up for IP Updates from Finnegan, please click here.



 
PTO Rules (Final and Proposed)


 

Legislation

An Act: To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code - H.R. 6621 - January 14, 2013 [PDF]
Leahy-Smith America Invents Act - Public Law 112–29 - September 16, 201 [PDF]

Senate
H.R. 1249 Passed Senate - September 8, 2011 ("Leahy-Smith America Invents Act") [PDF]
S. 23 Passed Senate - March 8, 2011 (“America Invents Act”) [PDF]
S. 23 Reported in Senate - February 3, 2011 [PDF]
S. 23 Introduced in Senate by Senator Leahy - January 25, 2011 [PDF]

House
H.R. 6621 Introduced in House - November 30, 2012 (To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code) [PDF
H.R. 1249 Passed House - June 23, 2011 ("Leahy-Smith America Invents Act") [PDF]
H.R. 1249 Reported in House - June 1, 2011 [PDF]
           House Report showing all the changes to existing statutes that would result from the bill passing as is [PDF]
H.R. 1249 Introduced in House - March 30, 2011 [PDF]

          


Congressional Testimony on Patent Law Reform

House
Committee on the Judiciary Hearing: "Promoting Investment and Protecting Commerce Online: Legitimate Sites v. Parasites, Part II" - April 6, 2011 [Website]

           Statement of The Honorable John Morton, Director, U.S Immigration and Customs Enforcement [PDF

           Floyd Abrams, Senior Partner, Cahill Gordon & Reindel LLP [PDF]

           Kent Walker, Senior Vice President and General Counsel, Google Inc. [PDF

           Statement of Christine N. Jones, Executive Vice-President, General Counsel, & Corporate Secretary, The Go Daddy Group, Inc. [PDF]

Committee on the Judiciary Hearing:"America Invents Act" - March 30, 2011 [Website]

           Statement of The Honorable David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark
           Office [PDF

           Statement of The Honorable Steve Bartlett, President and Chief Executive Officer of the Financial Services Roundtable [PDF]

           Statement of Steven W. Miller, Vice President and General Council for Intellectual Property, Proctor & Gamble Company [PDF

           Statement of Mark Chandler, Vice President, General Counsel and Secretary, Cisco Systems, Inc. [PDF]

           Statement of John Vaugh, Executive Vice President, Association of American Universities [PDF]

Committee on the Judiciary Hearing: "Promoting Investment and Protecting Commerce Online: Legitimate Sites v. Parasites, Part I" - March 14, 2011 [Website]

           Statement of Maria A. Pallante, Acting Register of Copyrights [PDF

           Statement of David Sohn, Senior Policy Counsel, Center for Democracy & Technology [PDF]

           Daniel Castro, Senior Analyst Information Technology and Innovation Foundation (ITIF) [PDF

          Frederick Huntsberry, Chief Operating Officer, Paramount Pictures Corporation [PDF]

 Committee on the Judiciary Hearing: Review of Recent Judicial Decisions on Patent Law - March 10, 2011 [Website

          Statement of Dan L. Burk, Chancellor's Professor of Law, University of California, Irvine [PDF]

          Statement On Behalf of the Business Software Alliance by Andrew J. Pincus, Partner, Mayer Brown LLP [PDF]

          Statement of Dennis D. Crouch, Associate Professor of Law, University of Missouri School of Law [PDF]

Committee on the Judiciary Hearing: Driving American Innovation: Creating Jobs and Boosting our Economy – March 9, 2011 [Website]

          Statement of Anthony Atala, M.D., Director, Wake Forest Institute for Regenerative Medicine and W.H. Boyce
          Professor and Chair, Department of Urology, Wake Forest University School of Medicine [PDF

          Michael S. Fulkerson, Ph.D., Chief Technology Officer, Rosetta Stone, Inc. [PDF]

          Scott Smith, Ph.D., Professor and Chair, Department of Mechanical Engineering and Engineering Science,
          University of North Carolina at Charlotte [PDF

Committee on the Judiciary Hearing: Crossing the Finish Line on Patent Reform: What Can and Should Be Done? - February 11, 2011 [Website]
        
        Testimony of David Simon, Associate General Counsel, Intellectual Property Policy, Intel Corporation [PDF] 
        
        Statement of Carl Horton, Chairman Coalition for 21st Century Patent Reform and Chief IP Counsel of General Electric [PDF
        
        Statement of Judge Paul R. Michel (Ret.) former Chief Judge U.S. Court of Appeals for the Federal Circuit [PDF]


Committee on the Judiciary Hearing: How an Improved U.S. Patent and Trademark Office Can Create Jobs - January 25, 2011 [Website]

        Statement of David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent
        and Trademark Office [PDF
        
        Statement of Douglas K. Norman, President, Intellectual Property Owners Association and General Patent Counsel for 
        Eli Lilly and Company, Inc. [PDF]
        
        Statement of Robert J. Shapiro, Chairman, Sonecon, LLC; Senior Fellow of the Georgetown University McDonough School
        of Business; and Former Under Secretary of Commerce for Economic Affairs [PDF]



Government Statements

Remarks by the President at Signing of the America Invents Act - September 16, 2011 [Website]

Statement from Press Secretary Jay Carney - September 13, 2011 [Website]

Statement from U.S. Senator Patrick Leahy - September 6, 2011 [Website]

Statements from USPTO Director David Kappos 
       September 16, 2011 [Website]
       September 8, 2011 [Website]
       June 23, 2011 [Website]
       June 21, 2011 [Website]

Statements from U.S. Commerce Secretary Gary Locke 
       May 31, 2011 [Website]
       April 26, 2011 [Website]

Statements from House Judiciary Chairman Lamar Smith 
       April 14, 2011 [Website]
       March 30, 2011 [Website]
       March 8, 2011 [Website]

Letter Requesting Debate on Constitutionality of H.R. 1249 - June 1, 2011 [PDF]

Press Release - Reps. Rohrabacher, Kaptur Lead Bipartisan Opposition to Patent Reform Bill - June 1, 2011 [Website]

Press Release - House Judiciary Committee - Support for House Patent Reform Proposal Grows - June 1, 2011 [Website]

Statement of the Senate Judiciary Committee about the America Invents Act - March 8, 2011 [Website
       White Board: Austan Goolsbee, Chairman of the Council of Economic Advisers, on Patent
       Reform [Video]

Press Release - USPTO - March 1, 2011 [Website]

Statement of Administration Policy - February 28, 2011 [PDF]


Industry Organization Statements

American Intellectual Property Law Association (AIPLA)
Letter to Speaker Boehner and Minority Leader Pelosi re: AIPLA supports Section 22 of H.R. 1249, the America Invents Act - June 9, 2011 [PDF]

Letter to Majority Leader Reid and Minority Leader McConnell re: Support for S. 23, The Patent Reform Act of 2011 [PDF]

Patent Reform Legislation Chart (itemizing AIPLA's position on each section of S. 23) [PDF

Intellectual Property Owners Association (IPO)
Letter to the House re: The absence of a provision in H.J. Res. 79 that would allow the PTO to spend all of the user fees it collects - September 21, 2011 [Website]

Letter to the House re: Full Funding for the U.S. Patent and Trademark Office - An Urgent Jobs Issue - June 8, 201 [PDF]

Letter to the Senate re: Full 2011 Funding for the U.S. Patent and Trademark Office - An Urgent Jobs Issue - November 24, 2010 [PDF]

Letter to the House re: Full 2011 Funding for the U.S. Patent and Trademark Office - An Urgent Jobs Issue, November 24, 2010 [PDF

Biotech Industry Organization (BIO)
House Judiciary Committee’s Patent Reform Bill is in Need of Reform, Says BIO [Website]

BIO Commends Launch of House Patent Reform Process [Website]

BIO Hails Senate Passage of America Invents Act [Website]

BIO Commends Senate Judiciary Committee Passage of Patent Reform Act of 2011 [Website

BIO Supports Patent Reform Act of 2011 [Website]



S. 515: Patent Reform Act of 2009
Introduced in the Senate - March 3, 2009 [PDF]
Reported in the Senate - April 2, 2009 [PDF]

H.R. 1260: Patent Reform Act of 2009
Introduced in the House - March 3, 2009 [PDF]

H.R. 1908: Patent Reform Act of 2007
Introduced in the House - April 18, 2007 [PDF]
Reported in the House - September 4, 2007 [PDF]
Engrossed in House [Passed House] - September 7, 2007 [PDF]
Placed on Calendar Senate - September 11, 2007 [PDF]

H.R. 2795: Patent Reform Act of 2005
Introduced in the House - June 8, 2005 [PDF]


Summary of Legislative History
Joe Matal, A Guide to the Legislative History of the America Invents Act: Part I of II, 21 FED. CIR. BAR J. 435 (2012) [PDF]

Joe Matal, A Guide to the Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. BAR J. 539 (2012) [PDF]

 


 

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