With so much of the current focus on Congress being centered around the debt ceiling debate, it is easy to forget about other legislative initiatives in the queue. Still, once the current crisis is resolved (or the can kicked down the road as the case
As discussed last week, the USPTO is anticipating the passage of patent reform in the near term. Upon enactment, the agency would have access to the additional fees of the one track program (expedited patent application examination), and the 15% surcharge. Based on this influx
Supplemental Examination, as currently proposed in the patent reform legislation, would enable Patentees to effectively cure inequitable conduct for all but the most offensive conduct. This reform provision was designed to combat the plague of inequitable conduct charges that existed prior to the Therasense decision.
Supplemental examination would enable the Patentee to have the USPTO consider, reconsider, or correct information believed to be relevant to its patent if the information presented a substantial new question of patentability (SNQ). If an SNQ is found to exist, the supplemental examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices). Once Supplemental Examination concludes, the issues brought before the Office in the second examination cannot serve as a basis for an inequitable conduct defense.
The legislative proposal hoped to provide a post grant opportunity to cure such issues as it was well established by the courts that patent reexamination and patent reissue could not cure such defects…..that is, until Therasense.
Continue Reading The Impact of Therasense on Patent Reform
Yesterday, USPTO Director Kappos participated in a Q&A session with the public on the pending patent reform legislation and its anticipated impact on the USPTO. A replay of the webcast may be found at Managing Intellectual Property here (free, but registration required).
Using a football analogy, Director Kappos explained that the current legislation was on the “one inch line,” and that he expected enactment in the next month or two. As to the current disparity between the House and Senate bills on fee diversion, Kappos explained that the USPTO could live with the House version of the bill as it was a step forward, but was hoping for further assurances from the Senate that funding would be allocated in full (similar to that made on the floor of the House).
The Director also explained that upon enactment, the agency would have access to the additional fees of the one track program (expedited patent application examination), and the 15% surcharge. Based on this influx of funding, it was expected that current restrictions on operations could be lifted, such as examiner overtime.
As to plans for preparing for the new proposed post grant proceedings, the USPTO will be hiring…a lot.
USPTO Director Dave Kappos will answer questions on the pending patent reform legislation and its anticipated impact on the USPTO today. Registration for this event is free (here).
Also, as a reminder, I will be presenting Patent Reissue: Benefits, Limitations & Strategies today. The program will
Last Friday’s disappointing June Jobs Report has ratcheted up the already significant pressure on the Obama Administration to address the struggling economic recovery. Meanwhile, the Senate has worked through the traditional July break in an effort to reach a compromise on the looming debt
As the saying goes, “almost” only counts in horseshoes and hand grenades. Recent events suggest that patent reform can now be added to the list.
Last week, H.R. 1249 was passed by the House. A copy of the bill, with all amendments, is found (here). A helpful mark-up illustrating the differences between the Senate Bill (S.23) and H.R. 1249 is found here, updated 6/28 to correspond to revised H.R. 1249. (Thanks to Brad Pedersen of Patterson Thuente Christensen & Pedersen for the mark-up).
As discussed last week, typically, the differences between the House Bill and Senate Bill would be reconciled by way of conference in the Senate. Yet, due to the politicizing of the fee diversion proposal of S.23 in the House (i.e., “the Republicans looking to increase government spending”), further tinkering with this proposal would seem risky. Perhaps recognizing that the “almost” compromise of H.R. 1249 is better than nothing in this economically charged political environment, the USPTO has signaled that 10 years of of patent reform bickering is enough already.
Continue Reading Patent Reform, Close Enough for Government Work?
Around 5:45 on Thursday, H.R. 1249, as modified by a Manager’s Amendment, was passed by the House (303 to 116). Fifteen separate amendments were offered, (previously discussed here) most of which were not adopted.
As H.R. 1249 substantively differs from the text of S.23, typically a Senate
As expected, the proposed prohibition against USPTO fee diversion has been excised from H.R. 1249. In a compromise proposal reached yesterday, collected fees that exceed USPTO appropriations for a given year will be maintained in a “Patent & Trademark Fee Reserve Fund.” The excess fees would be subject to return to the agency, upon congressional approval. Unfortunately, the fees maintained in this fund would almost certainly be diverted, at least in some form, by future budget amendments.
The latest manager’s amendment can be found (here) with the fee diversion compromise at Sec. 22. A statement of the Obama Administration’s concern on the compromise of Sec. 22 may be found (here). You can find a complete Bill summary, as well as rebuttal to the contitutionality arguments concocted by opponents. (here)
USPTO Director Kappos issued the following
Hold up, wait a minute.
The America Invents Act has been seemingly remixed and re-released as the “Leahy-Smith America Invents Act.” All Republicans, throw your hands up, all Democrats, throw your hands up…
With the House now moving to floor debate of H.R. 1249, amendment proposals have come flying from all directions. Not surprisingly, some of the proposals aim to strike PTO fee setting authority, the end of fee diversion, as well as the first to file provision. Should these amendments be adopted, the bill would be killed. Another amendment, introduced by John Conyers (D-MI) seeks to strike everything but PTO funding (including the Detroit Office!).
Further amendments attempt to address emerging criticisms of the bill. For example, a severability provision is added should any provision fall on constitutionality challenges. As a reminder first inventor to to file is deemed unconstitutional by some, and the retroactive effect of the Transitional Business Method Review has been challenged as in violations of the Takings Clause.
So, what changes are proposed for reexamination and post grant?