Patents Post Grant Blog

Changes & Funding Head to USPTO

With the imminent enactment of the Leahy-Smith America Invents Act (AIA) into law, the USPTO is preparing for a much needed  infusion of funding. Immediate funding relief comes by way of the 15% surcharge to patent fees included in the legislation. (See H.R. 1249, Sec. 11 Fees for Patent Services) The 15% surcharge will be implemented 10 days after enactment, the increased cash is immediately available to the agency.

Changes you will notice in the weeks ahead:

-Hiring, the USPTO is currently seeking Administrative Patent Judges (APJs) across all technologies.

-Additional patent examiner hires are expected in October.

-Examiner overtime was re-established yesterday (just in time for the end of fiscal year 2011).

-Prioritized examination, and other Office initiatives suspended/postponed back in April are expected to resume.

As to implementation of the AIA, the Office has been hard at work formulating rules for comment. The Office is scheduled to begin publishing the rules for comment in early to mid-December. Currently, the Office is working with the ABA, IPO and AIPLA on issue spotting to enhance the quality of the issued rule sets as there is little time for “town hall” or round table style meetings.

Senate Sends Patent Reform Bill to the White House

It only took 6 years, roughly the same time it takes many patent filers to navigate the USPTO. Nevertheless, a new chapter in U.S Patent law begins in a matter of days

Yesterday the Senate overwhelming endorsed the House version of the patent reform legislation known as the “Leahy-Smith America Invents Act” by a vote of 89-9. As discussed previously, while there were last minute amendment efforts, the Senate voted down all efforts to modify the legislation. Shortly thereafter President Obama addressed the nation identifying the passage of the legislation as “action we need.”

So, now what?   Read the rest of this entry »

Six Year Patent Reform Effort Heads to Final Vote

Today is the opening day of the 2011 American Football season. A few months back it seemed that the 2011 season may be lost altogether or significantly delayed due to legal wrangling and disputes over revenue allocation. Then suddenly, the parties came to an agreement, and in a matter of days an agreement was forged and signed. The games were set and ready to begin…tonight is the culmination of those hard fought efforts as a new season begins.

It is only fitting that today is also the day that the U.S. Senate, after years of legal wrangling and disputes over USPTO fee diversion, will also set aside their differences and kick off a new era in U.S. Patent Law.

Senate Majority Leader Harry Reid (D-Nev.) announced yesterday that the Senate will hold a vote on final passage of H.R. 1249 (Leahy-Smith America Invents Act) at 4PM today. While there has been a discussion of amending the bill, Read the rest of this entry »

Leahy-Smith America Invents Act Heads to Finish Line

As expected, the Senate voted to invoke cloture in overwhelming fashion yesterday evening, 93-5. With this procedural hurdle now behind the Senate, the House bill will be forced to a limited debate on the merits (including unlikely amendment) and a final vote. Debate is expected to begin as early as today.

While it is inevitable that some amendments will be introduced, along with a bit of  pro forma grandstanding, it seems clear that the Senate is intent on delivering the bill to the president in current form.  (As any amendment would scuttle the opportunity to pass patent reform in the near term, I do not expect any to be seriously considered or adopted—- the majority has spoken).   

UPDATE: Watch the Debate live today at 11:30AM

Enactment could occur in a matter of days.

Congress to Pass Point of No Return Today?

Past the point of no return
No backward glances
Our games of make-believe are at an end.

(Past the Point of No Return, Phantom of the Opera)

Today, Congress returns from summer recess to begin the Fall term. The first order of legislative business for the Senate will be to vote on a cloture motion to preclude further debate (beyond a limited and fixed schedule) of the Leahy-Smith America Invents Act. The vote is scheduled for later this evening and can be viewed on C-span.

As explained in early August, while there are differences with H.R. 1249 and S.23, most notably concerns over fee diversion, the Senate intends to simply adopt the House bill. The adoption of the House bill will prevent further back-and-forth between the Senate and House on legislation that is far too esoteric for the average voter. On the heels of last week’s dismal job report, and with elections upcoming, Congress is eager to pass something—anything –that they can sell to the masses as a job’s stimulus. With the Leahy-Smith America Invents Act being the only bill Read the rest of this entry »

Race to Secure Venue Could Shut Out USPTO

When there is an imminent threat of litigation, rather than await the inevitable lawsuit, a potential defendant may pursue a declaratory judgement to establish a lack of liability. In patent disputes, declaratory judgment of invalidity and/or non-infringement were traditionally sought to remove the specter of litigation from a prospective defendant’s business. Increasingly, however, declaratory judgement actions are filed to secure a more desirable venue in advance of a litigious competitor, or dreaded “patent troll.” For example, rather than await being added to the Lodsys dispute in the notoriously Patentee friendly Eastern District of Texas, Wolfram Research, The New York Times, and Foresee Results Inc all sought declaratory judgement of invalidity of the Lodsys patents in different federal district courts, namely, Wisconsin, Illinois and California.

For those prospective defendants seeking to utilize a DJ action to secure venue after the enactment of the America Invents Act, doing so will foreclose a later filed inter partes challenge (i.e., Inter Partes Review of Post Grant Review) at the USPTO.   Read the rest of this entry »

Patent Reform & Inter Partes Review

Last week, I discussed some important changes to inter partes patent reexamination that will become effective immediately upon enactment of the patent reform legislation. Namely, that the standard for initiating inter partes reexamination will become stricter. The new standard is defined as: a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This new standard replaces the current standard that requires a Substantial New Question of Patentability (SNQ), perhaps within a matter of days.

Inter Partes Review will ultimately replace inter partes patent reexamination on the one year anniversary of the enactment of the patent reform legislation. Thus, the interim standard for the last year of inter partes patent reexamination will help the USPTO prepare to transition to the new Inter Partes Review proceeding, which will use the same standard.

Enactment of America Invents Act to Change Inter Partes Patent Reexamination Practice Immediately

The USPTO is currently hard at work preparing to implement and adapt agency practices to comport with the various provisions of the Leahy-Smith America Invents Act. As many features of the legislation will require a significant USPTO rule making effort, most of the provisions of the Act will not become effective until the 1 year anniversary of enactment. In this regard, the USPTO has reportedly penciled in September 20th as the target date for the expected enactment of the Leahy-Smith America Invents Act.

While most provisions of the Act will not take effect until a year after enactment, there are some very important changes to patent reexamination practice that will become effective immediately…..likely, in a few weeks time. Read the rest of this entry »

ABA Accepting Best Blog Nominations

Yes, you have seen this post before.

I tend to take it easy on Fridays (at least in the summer when readership falls off by week’s end anyway), just another groveling solicitation reminder to vote!

The American Bar Association (ABA) is now accepting nominations for the 100 best legal blogs. If you have found anything posted here in the past year even remotely helpful to your practice/research interests I would appreciate the support. Historically, the ABA rankings tend to be dominated by general interest blogs that are not as geared toward actual practitioners as this one. 

Thanks for your support. (Nominate this blog here)

Inter Partes Patent Reexamination Filings Pose Challenge to Lodsys

Late Friday, Google announced that it had filed inter partes patent reexamination requests against two of the now infamous Lodsys patents, 7,222,078, and 7,620,565. Over the past few months, Lodsys has been contacting iOS and Android application developers seeking license fees, and has begun suing others to enforce their patent rights (the patents are purportedly directed to application transactions among providers and users). An infringement suit was filed against 11 defendants in Texas, including EA, Take-Two Interactive, Atari and Rovio (of Angry Birds fame).

As a licensee, Apple has attempted to intervene in the ongoing litigation arguing that app developers are covered under the terms of their license. Google, perhaps unencumbered by the contractual obligations of Apple with respect to challenging validity, has opened up a new battle front for Lodsys at the the USPTO.

As explained this past Saturday at Wired.com, Google announced the filing stating that:

We’ve asked the US Patent Office to reexamine two Lodsys patents that we believe should never have been issued. . …Developers play a critical part in the Android ecosystem and Google will continue to support them. [quote attributed to Google Senior Vice President and General Counsel, Kent Walker]

So, now what? Read the rest of this entry »