|WhitePaper - An Overview of the AIA|
|AIA Corrections Bill|
|Don't Throw Away Inventor's Notebooks?|
|White Paper - US Patent Reform: What Changes?|
|Patent Reform Effective Dates|
|Patent Reform Historical Perspective|
|The Matrix for Changing First-to-Invent on Cybaris|
|Brad Pedersen & Justin Woo on First Inventor to File|
|The Matrix for First-Inventor-to-File on SSRN|
|The Rush to a First-to-File Patent System in the United States, Minnesota Journal of Law, Science and Technology|
|The AIA: More Complicated Than 3D Chess? (PDF)|
|The AIA: More Complicated Than 3D Chess? (PPT)|
|April 9 AIA Panel at William Mitchell|
|America Invents Act Indepth|
|The Patent Reform Trainwreck|
|Leahy-Smith America Invents Act|
|S.23 American Invents Act|
|USPTO America Invents Act Implementation Info|
|Background on the America Invents Act|
|Tafas v. Kappos outcome press release|
Paul Onderick shares important information for Universities and Technology Tranfer Offices on the implications of the new micro entity fees for patent filings in his article, Qualifying for Reduce Patent Fees as a Micro Entity.
March 16, 2013 marked the commencement of first-inventor-to-file (FITF), the backbone of the new U.S. patent system under the AIA. For a comprehensive discussion of the new patent laws, read our latest article: An Overview of The America Invents Act (AIA): With a Focus on First-Inventor-to-File
The USPTO published final rules and examination guidelines for the new FITF laws. Based on our analysis, here are some key takeaways:
A bill (H.R. 6621) addressing several technical corrections to the America Invents Act has been signed by President Obama. For the most part, the bill fixes certain clerical errors and provides effective dates that were missing from the AIA. Other corrections include:
Removes "9-Month Dead Zone" for IPR Filings. Section 1(d) removes a 9-month so called dead zone for filing an inter partes review of a newly granted or reissued first-to-invent patent that had been unintentionally created by the way the effective date provisions of the AIA were originally implemented.
Clarifies Submission of Inventor's Oath. Section 1(f) clarifies some details about the inventor's oath and that an inventor's oath or declaration, or a substitute statement, can be filed up to the date the issue fee is paid.
Clairifes How the New Derivation Proceedings Operate. Section 1(k) clarifies the process and timing for derivation petitions under Section 135 so as to be consistent with the rules promulgated by the USPTO. A derivation petition can be filed up to one year after the first publication of claims by the deriver. The bill also clarifies which application is considered to be the "earlier" application for purposes of how Section 135 interfaces with other provisions of the AIA.
Changed Timing on PTA Calculations. In a non-AIA correction, the bill amends certain patent term adjustment (PTA) provisions of the Patent Act Section 154(b) related to international applications, the timing of initial PTA determinations and appeals of final PTA determinations.
No Reduction of Patent Terms for Pre-GATT Pending Cases. One change not included in the bill was a controversial provision related to a couple hundred pre-GATT patent applications that were filed before June 6, 1996 and still have not yet issued, such that they would be given a term of 20 years from filing instread of 17 years from issuance. Instead, under Section 1(m) of the bill, the USPTO must provide Congress with a report on these old cases.
No Change to the Post-Grant Review (PGR) Estoppel Provision. Another change not included in the bill was a change to the "raised or reasonably could have raised" standard for estoppel that applies to PGR proceedings. There were differences between the House and Senate versions on this language that may be due to scrivener errors, but there was also committee testimony last spring that correction of these differences would not be a mere "technical" correction--as Lamar Smith has characterized this issue.
With full implementation of the America Invents Act (AIA) approaching, along with the change to a first-inventor-to-file standard, some have suggested that there is no longer any reason to maintain inventor's notebooks to record development of innovations. Inventor's notebooks have been commonly maintained, under current law, in part to support assertions of early inventorship to predate prior art or in the case of an interference. These concerns will not apply under the new law.
There are several reasons why discarding the discipline of maintaining inventor's notebooks may be unwise.
While it's up to the individual company to determine the level of discipline to maintain in its innovation process, there are still good reasons to keep inventor's notebooks if your company derives at least some of its income from innovation.
October 18, 2012
The USPTO has extended the timeline for filing comments on its proposed guidelines for the first-to-publish provisions of the American Invents Act (AIA). There is a debate on whether the new grace period under the AIA should be interpreted narrowly or broadly. Unlike current law, the new grace period is triggered only if an inventor publicly discloses before a patent application is filed.
The proposed guidelines use a narrow interpretation of the grace period. If ultimately adopted, this would make the grace period all but non-existent for any intervening publication or patent filing.
This is an important issue for both the academic and independent inventor communities as the guidelines as proposed could affect their ablity to patent technologies. Please see this article for further information on this issue.
Comments on the Group 2 USPTO rules packages that address, among other things, the new post-grant proceedings that are part of the AIA have now been posted on the USPTO AIA website. Read the public comments, including those submitted on behalf of the Minnesota Intellectual Property Law Association by Patterson Thuente IP attorney Brad Pedersen.
On April 9, 2012 Patterson Thuente IP held its annual lecture at William Mitchell College of Law. Our guests were Q. Todd Dickinson, Nick Godici, Esther Kepplinger, and Robert Stoll, all former USPTO Directors and Commissioners who were in the trenches as patent reform took shape.
Watch the recorded webcast
President Obama signed into law today the Leahy-Smith American Invents Act of 2011, a groundbreaking patent reform bill that significantly changes the US patent system.
For the general public, the Leahy-Smith America Invents Act (AIA) has been touted as a package of reforms that should imporve the US patent system. The ultimate goal of the reforms is to encourage investment in innovation and, as a result, stimulate job growth. For inventors, patent owners and patent professionals, the AIA represents the biggest set of changes to US patent laws in 60 years. Initially introduced into Congress in 2005, the final bill includes three major changes, along with a wide variety of other "little" changes. Interestingly, the most high profile provisions in the original bill, those aimed at reforming patent litigation, were utilimately rejected and left on the Congressional cutting-room floor.
Given that many of the major changes represented in the 150 page bill will be phased in over time, it could be a decade or more before their true impact on the US patent system can be evaluated.
For a more comprehensive look at the AIA and how it will change US patent law, download our white paper: US Patent Reform: What Really Changes?
Brad Pedersen quoted in Seattle Post-Intelligencer.
If the Leahy-Smith America Invents Act becomes law, the USPTO will have to act fast in coming up with rules for implementation. The agency has created a new section on its website to keep stakeholders and the public informed.
The Leahy-Smith America Invents Act (AIA) has been passed by both houses of Congress in two somewhat different versions, and if the two versions are reconciled, President Obama has announce his intention to sign the AIA into law. The AIA includes many provisions that are not presently part of patent law. The transition from current law to the new law will take place over several years. The following is a summary of when certain provisions take effect. The section citations are based on a compared version of the two bills.
First Inventor to File
The United States will become a first-inventor-to-file (FITF) regime under the reformed Act. See Section 3. The FITF provisions will take effect 18 months after enactment. See Sec. 3(n)(1).
NOTE: There will be a “grace period” for the inventor to file after certain public disclosures. The new § 102(b)(1) provides that disclosures made by the inventor(s) one year or less before the effective filing date shall not be prior art. Therefore, publications by inventors will have the full effect of §102(b)(1) starting six months after enactment.
Filing by Assignee
Assignees to whom the inventor’s rights in the invention have been assigned can file directly instead of inventors under the new act. See Sec. 4(b)(1). Assignees can start filing one year after enactment. See Sec. 4(e).
Earlier Inventor Defense
Any person who invented before the first inventor to file a patent application can raise a personal defense to infringement. See Sec. 5. This provision takes effect immediately upon enactment and applies to any patent issued on or after the enactment date. See Sec. 5(c).
(including Post Grant Review and Inter Partes Review
The new Post-Issuance Proceedings (PIP) include a “Post Grant Review” and an “Inter Partes Review.” See Sec. 6. The PIP provisions will take effect one year after enactment and shall apply to all issued patents. See Sec. 6(c)(2)(A). There is also a graduated implementation provision that empowers the Director of the United States Patent & Trademark Office (USPTO) to impose a limit on the number of inter partes reviews during each of the first four years following enactment. See 6(c)(2)(B).
Patent Trial and Appeal Board (PTAB)
The Board of Patent Appeals and Interferences (BPAI) will be replaced by the Patent Trial and Appeal Board (PTAB). See Sec. 7. The PTAB will be formed one year after enactment and will handle proceedings commenced thereafter, with some exceptions. See Sec. 6(d). NOTE: There are two sections listed as "Sec. 6(d)."
Third Party Submissions
Third parties can submit publications for consideration in a patent application. See Sec. 8. Third party submissions shall take effect one year after enactment. See Sec. 8(b).
Fee Setting Authority
Current versions of the bill grant fee setting authority to the USPTO. See Sec. 10. Fee setting authority will be assumed by the USPTO immediately upon enactment. See Sec. 10(i)(1). This authority is repealed by a sunset provision seven years after enactment of the act. See 10(i)(2).
Patent owners can effectively “cleanse” a patent from specific charges of inequitable conduct by requesting a supplemental examination. See Sec. 12(a). This will protect the patent owner from charges of inequitable conduct but not the attorney(s) representing them. The effective date for supplemental examinations is one year after enactment and will be available for any issued patent. See Sec. 12(h).
Any strategy for reducing, avoiding or deferring tax liability will be insufficient to differentiate a claimed invention of the prior art. See Sec. 14(a). The effective date for the tax strategies provisions is immediately upon enactment and will apply to patents issued or pending on that date. See Sec. 14(e).
The requirement of disclosing the best mode of an invention shall not be a basis for invalidity or unenforceability. See Sec. 15(a). The elimination of failure to disclose best mode as a defense will take effect immediately upon enactment and shall apply to proceedings commenced on or after that date. See Sec. 15(c).
Provisions of the Act codify virtual marking. See Sec. 16(a)(1). These provisions, take effect immediately upon enactment and apply to court cases pending or commenced on or after that date. See Sec. 16(a)(2).
False marking claims can be brought only by the United States. See Sec. 16(b)(1). Only those suffering competitive injury can collect damages. See Sec. 16(b)(2). These provisions take effect immediately upon enactment, and apply to court cases pending or commenced on or after that date. See Sec. 16(b)(4).
Transitional Post-Grant Review Proceedings for Business Method Patents
A person who has been sued for infringement of a business method patent can challenge the validity of any claim of the business method patent under section 102 or 103 as they existed prior to the implementation of the act based on prior art meeting certain criteria. See Sec. 18. These provisions take effect one year after enactment of the law. See Sec. 18(b)(1).This subsection has a sunset provision that repeals it after four years. See Sec 18(b)(3).
Joinder of Parties in Patent Infringement Actions
Accused patent infringers may not be joined in a patent infringement law suit solely on the basis that they are alleged to infringe the same patent or patents in suit. See Sec. 19. This provision takes effect immediately and applies to any patent infringement suit filed on or after the date of enactment. See Sec. 19(d).
On June 23, 2011, the House passed HR 1249, The Leahy-Smith America Invents Act, with relatively wide bipartisan support by a vote of 304-117. Amendments seeking to strike each of the three major parts of the bill, which include (a) changing to a first-inventor-to-file system, (b) giving the Patent Office fee setting authority, and (c) significantly revising the scope and process for post issuance proceedings at the Patent Office, were each defeated during the debate on the bill. Patent reform now moves back to the Senate which passed a similar bill last March—the American Invents Act (S 23)—by a vote of 95 to 5. Once reconciled, the bill, which has been seven years in the making, is expected to be signed by the White House and will bring about the largest changes in United States patent law since 1952.
S. 23 (As Passed by Senate)
H.R. 1249 (As Signed into Law)
"The Matrix" Revised
May 2010 - With Patent Reform legislation now leaning toward a first-to-file-with-grace-period (FTFG) system, rather than first-inventor-to-file, Brad Pedersen and Justin Woo re-run their investigation to provide a glimpse into the "what if" of an FTFG system. Their article, The "Matrix" for Changing First-to-Invent: An Experimental Investigation into Proposed Changes in U.S. Patent Law, was published on Cybaris, An Intellectual Property Law Review.
Senate Leaders Reach Agreement on Patent Reform
March 2010 - U.S. Senator Leahy (D-Vermont) and five other Senators unveiled an agreement on patent reform legislation March 4, 2010. The tentative agreement serves as a substitute for the bill approved by the Senate Judiciary Committee last year.
The Matrix for First-Inventor-to-File
December 2009 - Brad Pedersen and Justin Woo examine whether or not moving from a first-to-invent to a first-inventor-to-file patent system in the United States will achieve the goal of global harmonization. Their results were published on the Social Science Research Network: The "Matrix" for First-Inventor-to-File: An Experimental Investigation into Proposed Changes in U.S. Patent Law.
USPTO Rescinds Rule Changes
October 2009 - The saga of the USPTO’s controversial proposed rule changes appears to have come to a close. On October 8, 2009 the Patent Office announced that it is rescinding the rules and will file a motion to dismiss and vacate the federal district court decision in the related lawsuit, Tafas v. Kappos. USPTO Press Release
Patent Reform in the Deep Freeze
July 2009 - The patent reform movement, both in terms of legislation and rule-making, appears to be frozen in its tracks. Here’s a summary of what has happened over the past several months. Patent Reform in the Deep Freeze
Update: New Rules Trainwreck Averted
April 2008 - A District Court in Virginia handed down a decision that permanently blocks implementation of the USPTO's proposed new rules. Read Brad Pedersen's summary and analysis: The New Rules Train is Off the Tracks
Claims and Continuations Practice - Final Rule
Click below for information and updates on the new rules for claims and continuations on the USPTO’s website
New USPTO Rules Q & A
October 2007 - A collection of some more indepth inquiries by our clients and colleagues regarding the new USPTO Rules.
-UPDATED- The New PTO Rules: How to Deal with an Impending Train Wreck
October 2007 - A detailed presentation about the new USPTO rules on claims and continuations. This presentation is updated on a regular basis to reflect current guidance on the new rules.
Power Point Show - (Large File, may take a few minutes to load)
The Rapidly Changing Landscape of Patent Rules, Case Law and Patent Laws
October 2007 - An overview of the triad of forces that are changing patent law as we know it. This presentation includes narration by attorney Brad Pedersen.
Power Point Show - (Large File, may take a few minutes to load)
The New PTO Rules: How to Deal with an Impending Train Wreck
October 2007 - This presentation includes narration by Patterson Thuente partner Brad Pedersen.
Power Point Show - (Large File, may take a few minutes to load)
The Intellectual Property Train Wreck (animated video)
This animated short illustrates how many are feeling about the new rules (all in fun, of course!) Superman Cartoon Clip from “Billion Dollar Limited” original copyright 1943 by Paramount Pictures, now in public domain and used under Creative Commons Copyright License
The Rush to a First-to-File Patent System in the United States
June 2006 - The patent reform movement began with the introduction of the Patent Reform Act of 2005 in June 2005. A year later, Brad Pedersen and Vadim Braginsky published The Rush to First-to-File Patent System in the United States, asking whether a globally standardized patent reward system is really beneficial to patent quality and administrative efficiency.