Free Webinar Series – July
This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, July 23rd @12:30 (est). The July webinar is entitled:
Post-Grant Proofing Your Patent Portfolio: Prosecuting for the New Patent Assertion Landscape. (Speakers are Scott McKeown, Dianna Devore Ph.D, and Chris Bullard).
The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 60 minutes. After the presentation there will be a 30 min Q&A period. To attend the webinar please sign up by clicking (here). You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. VA CLE credit will be provided.
We look forward to speaking with you during the webinar.
(For those seeking PTAB strategy CLE this month, please join my colleague Todd Baker tomorrow on AIPLA’s webinar enitled PTAB: Tactics for Launching a Patent Attack and for Surviving One)
USPTO Reacts Quickly to Landmark 101 Ruling
Although a few minutes late for today’s PatentsPostGrant.com webinar on the topic, the USPTO has now issued Preliminary Examination Instructions on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., No 13-298 (June 19, 2014). Any member of the public may submit written comments by July 31, 2014. In the meantime, the USPTO will use these preliminary instructions when determining subject matter eligibility under 35 U.S.C. 101 of claims involving abstract ideas in view of CLS Bank.
Dr. Dianna DeVore Joins Oblon Post Grant Team
I interrupt my regularly scheduled ramblings for a bit of Oblon firm news on this Friday. I am pleased to announce that Dianna DeVore, Ph.D. has joined the firm’s the Post-Grant Patent practice group as Special Counsel.
For the past three and a half years, Dr. DeVore has been Senior Vice President of Intellectual Property and Legal Affairs at Ariosa Diagnostics, Inc. where she developed a coordinated intellectual property strategy including post-grant challenges, litigation, and related patent prosecution. Dianna brings over 18 years’ experience in intellectual property and transactional law, including providing product protection strategies and coordinating adversarial proceedings for companies ranging from emerging technology companies to large pharmaceutical companies.
Free Webinar, Wednesday 6/25
Yesterday, the Supreme Court issued its long-awaited decision in CLS Bank v. Alice Corp. on patent eligibility standards for computer implemented inventions. This decision will impact current 101 challenges in CBM proceedings, and shape patent procurement/claiming strategies for software related methodologies going forward.
Please join me and my authoritative panel for this special edition of the PatentsPostGrant.com webinar series. Together with my colleagues Michael Kiklis, author of the recently released treatise, “The Supreme Court on Patent Law,” and Stephen Kunin, former Deputy Commissioner for Patent Examination Policy at the USPTO, we will endeavor to explore this important ruling.
Click here to Register: http://event.on24.com/r.htm?e=794534&s=1&k=53B7CFD63569A11431583A5913CAEED3
Senate Judiciary Gives Up on Comprehensive Patent Reform
With the writing on the wall for weeks now, today, the Senate Judiciary Committee officially pulled the plug on the Patent Transparency and Improvements Act. The Bill was ambitiously designed to carry the comprehensive changes of the Goodlatte Bill (passed by the House in late 2013 (H.R. 3309)) through the Senate. However, the drastic nature of some of those changes resulted in significant lobbying pressure from large stakeholders (e.g., universities and research driven industries such as Bio/Pharma). The intense lobbying interest, recent developments in the law, and criticism that the bill was overreaching, derailed all efforts to reach a consensus at the committee level.
Senator Leahy was optimistic in his statement (here) that there would still be an opportunity in 2014 for a further attempt at reform. But, practically speaking, only a tightly focused bill with widespread bipartisan support could make it through Congress in the remaining calendar year, that is— nothing comprehensive. At most, expect to see a push of narrowly tailored bills directed to abusive demand letter practices.
Writing is on the Wall for 2014
With yet another (5th or 6th?) manager’s amendment delay announced yesterday by the Senate Judiciary Committee, it is clear that momentum for patent reform is waning on the Senate side. Whether it be the recent Supreme Court decisions mooting the need for fee shifting (in the minds of some), the complexity and degree of proposed changes, or significant lobbying pressure, fatigue has set in. Even if a deal were to be somehow struck this month, such would not be anything near the text of the House bill. Expecting such a deal, floor debate, positive vote, and necessary conference on House/Senate bill differences, all with mid-term elections and summer holidays/recess on the horizon… not happening.
I’m calling it for major reform efforts this year. I expect less ambitious reform legislation for 2015.
Passage of Major Reform in 2014 Seems Unlikely
This morning the Senate Judiciary Committee once again delayed release of the manager’s amendment of The Patent Transparency & Improvement Act. Perhaps the committee needed additional time to study the impact of this week’s Supreme Court cases on sanctions— or, more likely, this is just a continuation of the intense lobbying tug-of-war.
Either way, meaningful reform in 2014 is looking increasingly less likely with mid-term elections on the horizon.
Senate Compromise Outlined
While still at least a week away from the official Manager’s Amendment on the The Patent Transparency & Improvement Act, a document has been circulating purporting to outline the compromise between Senators Schumer (D-NY)and Cornyn (R-TX). (here). Most of the changes are directed to fee shifting and patent litigation pleading and discovery controls.
Compromise Reached, Manager’s Amendment Promised Post-Recess
With many fearing that the Senate Judiciary Committee had lost their way on S.1720 known as The Patent Transparency & Improvement Act, news comes today that after weeks of partisan wrangling compromise has finally been reached. Senator Leahy posted the following statement on his webpage minutes ago:
For weeks, members of the Judiciary Committee have been engaged in extensive bipartisan negotiations on legislation to address abuses in the patent system. We have made enormous progress, and we now have a broad bipartisan agreement in principle. This is a complex issue and we need additional time to draft the important provisions that have been the subject of discussion.
I have talked to many Senators on both sides, and because I want to be sure everyone is comfortable with how these pieces fit together, I will circulate a manager’s package the day we return from recess, and the Judiciary Committee will consider that legislation the first week we are back.
Stalemate Along Ideological Lines
The Senate Judiciary Committee continues to struggle with S.1720 (Patent Transparency & Improvements Act of 2013). Yet again, the Committee has postponed mark-up of the bill. While mark-up remains possible on Thursday April 10th, given the growing political dissension along party lines on fee shifting, and significant lobby pressure on all sides, it now seems impossible for the Bill to advance in any significant regard before this Friday’s Easter Break. Unless progress is made in the next few weeks the bill is in danger of stalling for the remainder of the year (i.e., after midterm elections conclude).