IP Update
Patent Law Reform 2011
September 29, 2011
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 will continue to follow developing news on patent reform, and we will also provide analysis on the changes to the patent landscape. To sign up for IP Updates from Finnegan, please click here.
Finnegan Patent Law Reform Resources
Podcasts
“
Rebecca McNeill Discusses the Leahy-Smith America Invents Act and the Potential Impact on the U.S. Patent System,” - September 8, 2011
IP Updates
“
America Invents Act Enacted Into Law On September 16, 2011,” September 16, 2011
“
President Obama to Sign America Invents Act on Friday, September 16, 2011,” September 13, 2011
“
Senate Approves Leahy-Smith America Invents Act,” September 8, 2011
“
The House votes to reform U.S. patent laws by approving the America Invents Act by a margin of 304 to 117,” June 24, 2011
"
Senate Passes Patent Reform Act of 2011," March 9, 2011
Articles
“
The Current and Future Status of False Marking Cases,”
Bloomberg Law Reports - August 22, 2011
“
Treatment of Business Method Patents in Pending Patent Reform Legislation: Bilski Backlash?,”
BNA’s Patent, Trademark & Copyright Journal - July 15, 2011
“
The Expansion and Possible Contraction of False Marking Cases,”
The Federal Circuit Bar Association Bench & Bar Newsletter - June 2011
“
What’s Next for the U.S.–The Metric System?: A Quick Look at the “Imminent” Major U.S. Patent Law Reform,”
CIPA Journal - June 2011
“
Stemming the Tide of False Marking Cases,”
Bloomberg Law Reports - May 16, 2011
“
Reform Law Would Allow for Quick Challenges to Patents,”
The National Law Journal - May 9, 2011
“
A Different Approach to Tax Strategy Patents,”
Law360 - February 25, 2011
"
Special Feature - Patent Legislation - Meeting the Challenges of Reform?,"
Intellectual Property Today - January 28, 2011
"
Patent Reform Continues to Focus on Post Grant Challenges,"
Full Disclosure - April 2010
"
USPTO News,"
Full Disclosure - February 2010
Events
“
Key IP Legal Events in 2011 and a Look Ahead to 2012,” October 27, 2011 [Finnegan-Hosted Event]
“
BioNetwork West 2011,” October 24-26, 2011 [Sponsorship; Speaking Engagement]
“
8th Annual IPAG Conference,” October 6-7, 2011 [Speaking Engagement]
“
Ipendo User Forum Europe,” September 29-30, 2011 [Sponsorship; Speaking Engagement]
“
Understanding U.S. Patent Reform and What It Means to Your Business and Practice: First Inventor-to-File (Finally!) and So Much More,” September 22, 2011 [Finnegan-Hosted Event]
“
Introduction to U.S. Patent Reform (Mandarin),” September 20, 2011 [Webinar]
“
Understanding U.S. Patent Reform and What It Means to Your Business and Practice: First Inventor-to-File (Finally!) and So Much More,” September 20, 2011 [Finnegan-Hosted Event]
“
Understanding U.S. Patent Reform and What It Means to Your Business and Practice: First Inventor-to-File (Finally!) and So Much More,” September 19, 2011 [Finnegan-Hosted Event]
“
Understanding U.S. Patent Reform and What It Means to Your Business and Practice: First Inventor-to-File (Finally!) and So Much More,” September 16, 2011 [Finnegan-Hosted Event]
“
Understanding U.S. Patent Reform and What It Means to Your Business and Practice: First Inventor-to-File (Finally!) and So Much More,” September 14, 2011 [Finnegan-Hosted Event]
“
Understanding U.S. Patent Reform and What It Means to Your Business and Practice: First Inventor-to-File (Finally!) and So Much More,” September 12, 2011 [Finnegan-Hosted Event]
“
Understanding U.S. Patent Reform and What It Means to Your Business and Practice: First Inventor-to-File (Finally!) and So Much More,” September 9, 2011 [Finnegan-Hosted Event]
“
Understanding U.S. Patent Reform and What It Means to Your Business and Practice: First Inventor-to-File (Finally!) and So Much More,” September 8, 2011 [Finnegan-Hosted Event]
“
Making Strides in Patent Reform: Making Sense of the Impact of Your Business,” June 17, 2011 [Speaking Engagement]
“
Understanding Patent Reform and How It May Impact Your Business,” June 8, 2011 [Finnegan-Hosted Event]
“
ACS Middle Atlantic Regional Meeting,” May 21-24, 2011 [Speaking Engagement]
“
Understanding U.S. Patent Reform and How It May Impact Your Business,” May 19, 2011 [Finnegan-Hosted Event]
“
Understanding U.S. Patent Reform and How It May Impact Your Business,” May 10, 2011 [Finnegan-Hosted Event]
“
BIO Monthly Briefing,” April 26, 2010 [Speaking Engagement]
“
Keeping Track: Insights on Biotech and Pharma Patent Law,” October 29, 2009 [Finnegan-Hosted Event]
Media
“
Patent Reform Law to Curb Inequitable Conduct Claims,”
Law360 - September 23, 2011
“
Patent Reform a Reality: Costs and Opportunities Ahead,”
The Gray Sheet - September 12, 2011
“
Stakeholders Provide Suggestions to Prepare for Changes in Practice after Patent Reform,”
BNA Patent, Trademark & Copyright Journal - September 2011
“
Patent Reform Bill Clears Senate, Heads to Obama,”
Law 360 - September 8, 2011
“
Senate Set to Vote Yes on Patent Reform Bill,”
Law 360 - September 2, 2011
“
Patent Reform Inches Closer to Reality,"
R&D Directions - May 2, 2011
"
A Familiar Start to the New Year in IP - The Community's Reaction to Patent Reform and Anti-Piracy Attack,"
BNA Patent Trademark & Copyright Journal - February 4, 2011
"
Senate That Cried Wolf Readies Fifth Try at Patent Law Changes,"
Bloomberg - February 2, 2011
Legislation
Leahy-Smith America Invents Act - Public Law 112–29 - September 16, 2011 [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 - January 25, 2011 [
PDF]
House
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 - February 24, 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, 2011 [
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]
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