Crucial Funding Necessary to Implement America Invents Act
The “minibus” spending bill (H.R. 2112) passed by the House and Senate late Thursday was signed into law by President Obama last Friday. The bill temporarily solves USPTO’s funding problems through September 30, 2012 (end of fiscal year ‘012). The bill allocates at least $2.7 billion of fee collections in 2012, up from about $2.1 billion in 2011. The Office can spend only what it collects, but estimates suggest a $2.7 billion influx of fees for fiscal 2012.
With the need to reconfigure the Board of Patent Appeals & Interferences (BPAI) into the Patent Trial & Appeal Board (PTAB) including at least 100 new Administrative Patent Judges, the increased funding was an absolute necessity to implement the new mechanisms of the AIA.
Business Method Patent Definition Keyed to Claim Scope?
The Transitional Program for Covered Business Method Patents, (TPCBMP) will be implemented by the UPSTO on September 16, 2012. The new post grant option essentially provides that any “covered business method patent” is eligible for Post Grant Review (PGR) independent of the standard limitations for initiating PGR (i.e., 9 month window, patent application filing date).
The legislation defines a “covered business method patent” in amorphous terms, as follows:
a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
It is left to the USPTO to interpret the practical scope of a “covered business method patent.” Not surprisingly, those that routinely obtain patents in this space, USPTO (Class 705), advocate a narrow interpretation. On the other hand, companies subject to e-commerce patent assertion campaigns hope that the definition will be keyed to claim breadth– embracing patents outside of the banking and financial services industry. Read the rest of this entry »
Group 2 Rule Making Effort in Final Stages
Since the enactment of the Leahy-Smith America Invents Act (AIA), and even before, the USPTO has been busy fashioning new rules to implement the various provisions of the legislation. The USPTO has been aggressively seeking public comment prior to publishing the proposed new rule notices due to the significant amount of changes introduced by the legislation and the short time time frame.
The Office has grouped the various rule packages. Group 1 related to rules that needed to be provided immediately. Group 2 is directed to provisions that will become available 12 months after enactment. These proposed rules are expected to be introduced in late December or early January. Read the rest of this entry »
Reexamination Specialist Leaves West Coast Firm, Moves Next Door to USPTO
I take a break from the normal discussions on patentspostgrant.com to briefly announce the addition of my new partner Mr. Greg Gardella to the Oblon Post Grant Practice Group, effective tomorrow. Greg is a preeminent specialist in post grant USPTO proceedings having handled a significant amount of very high profile patent reexamination disputes, such as the reexamination of TiVo’s time warp patent.
Formerly the Director of Irell & Manella’s Patent Reexamination Practice, Greg leaves his friends on the West Coast to continue his successful practice on the USPTO doorsteps. Greg provides significant depth to one of the leading post grant practice groups in the country (if I may say so myself). Welcome Greg!
Halloween Webinar to Discuss AIA Implementation Plans & Progress
Next Monday, the USPTO will host a free public webinar at 1PM to discuss the America Invents Act (AIA). USPTO participants in the webinar will outline the agency’s implementation plans, and answer a selection of questions submitted during the session. Questions should be submitted in advance to aia_townhallquestions@uspto.gov.
Scheduled to speak during the webinar are:
David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO
Teresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO
Robert L. Stoll, Commissioner for Patents
Bernard Knight, USPTO General Counsel
James D. Smith, BPAI Chief Administrative Patent Judge
Webcast viewing instructions may be found (here)
Upcoming CLE to Focus on Post Grant Practice & Litigation Impact
I will be speaking in an upcoming live phone/web seminar entitled “USPTO Post-Grant Proceedings After New Patent Reform Law” scheduled for next Wednesday, September 28, 1:00pm-2:30pm EDT.
Today the Leahy-Smith America Invents Act (AIA) becomes law, the most significant revamping of the patent system in decades. This legislation will bring immediate changes to patent practice in the U.S. The AIA will introduce new post-grant mechanisms that provide strategic opportunities for Patentees and third party challengers alike. These changes will be especially dramatic for patent litigants as the legislation aims to transfer patent validity challenges from district courts to the USPTO, automatically stay some disputes, and place time limits on their initiation.
Topics to be discussed include:
- How will current reexamination practices evolve?
- What are the new post grant options, how will they be implemented, and when?
- How do the changes of the AIA alter litigation strategies, and the strategic use of patent reexamination parallel to litigation?
- What are the relevant deadlines and best practices?
Registration remains open.
Key Facts & Dates for all Post Grant USPTO Proceedings
While the America Invents Act (AIA) provides many new post grant proceedings, it also introduces changes to existing proceedings. While I have written about these changes previously, it would seem helpful to condense the important facts all in one place. Thanks to Paul Morgan for his suggestion for this post, and contributions to the content.
1. Ex Parte Patent Reexamination (existing proceeding) — The AIA precludes appeals by Patentees to the District Court in ex parte patent reexaminations. (to the extent that right ever existed, previous post (here). That is to say 35 U.S.C § 306 was amended to reference 144 instead of 145. H.R. 1249 at page 29.
Effective Date: Enactment
Side Notes: The SNQ standard, which is no longer used in inter partes patent reexamination is still used in ex parte patent reexamination. Ex parte patent reexamination practice remains largely unchanged by the AIA.
2. Inter Partes Patent Reexamination (existing proceeding, to be replaced) — The AIA replaces the SNQ standard with a new standard, namely a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. H.R. 1249 at page 22.
Effective Date: Enactment
Side Notes: Inter Partes patent reexamination is to be replaced Read the rest of this entry »
America Invents Act Raises USPTO Fees September 26th
Last Friday, President Obama signed the Leahy-Smith America Invents Act(AIA) into law. As discussed previously, one of the major changes that became effective immediately is the new standard for initiating inter partes patent reexamination. As the rush to beat the enactment deadline is now over, what other changes are on the immediate horizon at the USPTO?
Fee Increases.
For those with patent application filings of any kind due in the next few weeks, keep in mind that new 15% fee surcharge will take effect on September 26th (10th day after enactment). Note that the fees for filing a request for ex parte patent reexamination and inter partes patent reexamination remain unchanged. A schedule of the increased fees is found (here).
The USPTO has also posted a FAQ on the various provisions of the AIA. (here)
Pre-1999 Patent Filings No longer Immune to Inter Partes Challenge
Back in August, I explained the import of various effective date provisions of the Leahy-Smith America Invents Act (AIA) as they relate to current and future post grant USPTO challenges.
The AIA changes the USPTO standard for initiating inter partes patent reexamination; this change will take effect upon enactment, tomorrow.
A second important date provision is the one year anniversary of enactment as it may foreclose inter partes options altogether for defendants currently involved in suits pertaining to newer patents (i.e., patents that matured from applications filed on or after November 29, 1999). For such litigants, if an inter partes proceeding is desired, action must be taken before the anniversary.
Interestingly, for those defendants that will become involved in suits pertaining to older patents (i.e., pre- ‘99 filings) after enactment, but before the anniversary, options at the USPTO will actually expand upon the one year anniversary. That is to say, defendants may choose to wait for new inter partes opportunities to challenge patents never before eligible for such scrutiny. Read the rest of this entry »
Leahy-Smith America Invents Act To Be Signed Into Law Friday
Today, White House Press Secretary Jay Carney announced that the Leahy-Smith America Invents Act (AIA) will be signed by President Obama on Friday, September 16th.
Announcing the signing aboard Air Force One today, Carney stated, “The America Invents Act passed with the president’s strong leadership after a decade of effort to reform our outdated patent laws.”
Carney also announced to reporters that, at the signing event Friday, President Obama will announce new steps that the White House is taking to “convert ideas of American Universities and research labs into new products to expand our economy and create jobs.” It is not clear if this announcement is related to intellectual property protection, or some other government initiative.
What does this mean for you, right now? Read the rest of this entry »
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