News

Patent Reform a Reality: Costs and Opportunities Ahead

The Gray Sheet
September 12, 2011

Related Professionals: Bookoff, Leslie I., Melwani, Dinesh N.

Media Mention

On September 8, 2011, the Senate passed the House version of legislation known as the Leahy-Smith America Invents Act, ending six years of debate on the shape of U.S. patent reform policy, but also introducing some uncertainty and potential opportunity into a system that has changed little in 60 years. “In terms of the general big picture, the changes will cause medical device companies and other companies ... to be much more proactive in many of their patent activities,” emphasized Finnegan partner Les Bookoff. Dinesh Melwani, also an attorney with Finnegan, added “larger companies will likely try to use this mechanism to attack patents that are coming out of the pipelines from smaller companies.” While adding a first-to-file feature and a new procedure for post-grant review of patents to the U.S. patent system, Congress was unable to resolve the fees issue that has plagued the U.S. Patent and Trademark Office (USPTO). While the bill grants the USPTO the authority to set its own fees, Congress retained their appropriations power, controlling any fees the USPTO collects in excess of its budget