As reported earlier this month, Congress is currently considering a technical amendment to the America Invents Act (AIA). House Bill H.R. 6621 is being proposed by Congressperson Lamar Smith (R-Tx) to correct several “technical” aspects of the AIA. On the
There has been a ton of armchair quarterbacking since last Friday’s one billion dollar damage verdict in the Apple/Samsung patent war. While Apple is generally regarded as a high-tech innovator, many commentators take issue with the mechanism by which Apple has asserted their rights. Many uninformed commentators are quick to decry the verdict as an exploitation of a patent system in need of reform. Yet, it is important to note that the U.S. patent system was reformed not even a year ago. The vast majority of legislative changes to U.S. patent laws will only begin to go into effect this September 16th.
Nowhere is the potential for the current AIA reform more clearly pronounced than in the public statements of the Apple/Samsung Jury Foreman.
Continue Reading Apple Jury Confuses Obviousness Analysis in Arriving at Record Damage Verdict?
Back during the drafting of the America Invents Act (AIA), some questioned whether the switch to a “first-inventor-to-file” system was constitutional. The argument was that the Intellectual Property Clause of the U.S. Constitution (Article I. Sec. 8) guaranteed the exclusive rights of inventions to “inventors,” and that this term could not
Since the enactment of the America Invents Act (AIA) in September of 2011, the “patent reform” embodied by the AIA has been slowly rolling out. In fact, the bulk of the truly significant changes to patent law are still to come. These changes include the change over to the first inventor to file model in March of 2013, and the kick off of the new post grant patent proceedings next month. With so much change on the immediate horizon it would seem premature to consider further changes to patent law until the last round has had time to take effect.
Evidently at least one Congressman feels that the AIA does not go far enough to combat frivolous “troll” lawsuits. Congressman Defazio of Oregon is sponsoring a bill entitled “Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012.” The bill proposes that the costs (including attorney fees) of patent lawsuits relating to hardware and software should be recoverable from the Patentee should the court find that the Patentee did not have a reasonable likelihood of succeeding on the merits. (bill here)
Interestingly, the bill offers a fairly expansive definition of software as “any process that could be
Continue Reading New House Bill Targets Software Patent Litigation
During yesterday’s hearing of the Senate Judiciary Committee, Director Kappos explained the various initiatives ongoing at the USPTO with respect to AIA implementation, efforts to address drafting errors in the AIA, and backlog reduction efforts.
Toward the end of the hearing, Director Kappos was asked to justify the use of the broadest reasonable interpretation (BRI) in the new post grant proceedings. This same comment was earlier submitted to the USPTO by the major bar associations (for reasoning that has long escaped me). Director Kappos explained that the AIA requires the USPTO to assess patentability, not validity. In this way, the Agency is simply following the mandate of the legislation.
Shortly thereafter, the Director issued an expanded rationale on his blog. The Director correctly explained that:
Continue Reading USPTO to Apply BRI Claim Standard in Post Grant Proceedings
Earlier this week, the USPTO issued a Notice of Proposed Rulemaking to implement the micro entity provision of the Leahy-Smith America Invents Act (AIA). If an applicant qualifies as a micro entity, then the applicant is eligible to pay reduced patent fees once the USPTO exercises its fee setting authority under the AIA (in the
During last week’s hearing before the House Judiciary Committee on the implementation status of the America Invents Act (AIA), most of the invited speakers offered particular comments/suggestions on the USPTO’s implementation efforts. Many of these comments were simply re-presentations of written comments submitted this past Spring.
Others focused on possible technical amendments to the AIA. Interestingly, former Committee Chairman James Sensenbrenner (an opponent of the original legislation) accused Committee members of devising such amendments in secret. However, this accusation was quickly dismissed by other members of the Committee who took the position that no such technical amendment exists…..yet anyway. Of course, possible technical fixes have been rumored for quite some time. (webcast here)
When it comes to post grant proceedings, there are quite a few “fixes” that are needed if the legislation is to achieve the goals of the legislature.
Tomorrow, the House Judiciary Committee will hold a hearing on the Implementation of the America Invents Act at 10AM. The hearing will be webcast, information is found (here).
The agenda provides a list of speakers, some of which will discuss the implementation of the new post grant proceedings.
Back in January of 2011, the Director of the USPTO initiated reexamination of U.S. Patent 6,567,790 (here), which claims a method of minimizing transfer tax liability. In 2007, the ‘790 Patent was asserted against a corporate officer of Aetna Inc, the case was settled for
2011 was perhaps the most significant year to date in terms of post grant patent practice. The perennial legislative effort generally known as “patent reform” finally bore fruit as the Leahy-Smith America Invents Act (AIA); patent reexamination filings in 2011 reached an all time high; patent reissue practice was explored and clarified by the CAFC; and patent litigation parallel with patent reexamination continues to expand as a well established strategic practice.
As to the America Invents Act, several entirely new post grant patent proceedings have now been enacted into law (effective September 16, 2012). A summary of these proceedings, and discussions of their expected impact are linked below (and throughout the blog).
Transitional Business Method Patent Challenge
The USPTO is scheduled to
Continue Reading 2011 Year in Review — Patent Reform & The New Post Grant Landscape