On December 18, 2012, the House of Representatives passed the AIA technical amendments bill by a vote of 308 to 89. Here is the link to the bill as passed.
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During the last six days of a session the Speaker of the House of Representatives is allowed to suspend Rules in order to expeditiously dispose of non-controversial matters quickly before the end of a session. See Suspension of the Rules.
This year there will be several intellectual property bills that will move under suspension of House Rules on Tuesday afternoon, December 18, 2012. One is a substitute version of HR 6621, the America Invents Act (AIA) technical corrections bill.
Section 1(m) has been amended to include a PTO study in lieu of the original pre-GATT provision.
For a better part of the past year, there has been talk about the possibility of Congress moving a technical corrections bill to fix some “errors” within the America Invents Act (AIA). The AIA was signed into law on September 16, 2011 and contains, as most major pieces of legislation do, some minor drafting errors. On Friday, November, 30, 2012, a bill making technical changes to the AIA was introduced in the House of Representatives. The bill number is HR 6621. The proposed AIA package does NOT include a so-called “fix” to post-grant review that some considered to be substantive and not technical.
To rewind: Earlier this year, there had been some behind the scenes discussions on Capitol Hill about possibly modifying the AIA’s PGR estoppel provisions in a way that would have been problematic to patent owners. The discussed change would have removed from the AIA the “could have raised” estoppel standard. Concerns about weakening the PGR estoppels provisions as part of a ‘technical” package were communicated by members of the Innovation Alliance, university, inventor, and venture capital communities.
Fast forward to today: The bill does not contain the troubling PGR “fix.” Key staff on the Hill believe the measure to be non-controversial. House passage of the measure could take place before year’s end. What follows is the text of a draft section-by-section analysis of what was expected to be in the introduced AIA package of fixes.
The first line of the press release says: “Although the America Invents Act (AIA) that took effect September 15, 2011…”
Now I am not one who normally quibbles about what could be a harmless typographical error — from time to time I make my fair share (and then some) of mistakes. But the AIA took effect on September 16, 2011, not September 15. A minor point no doubt, but once I read the rest of the story I wondered whether that was really a mistake, typographical error or more indicative of ALM writing about something that they just don’t understand.
We just wrapped up our last live Patent Bar Review Course for 2012. We were in San Francisco for the past few days, once again teaching a room of would-be patent attorneys and patent agents. This group now has the task of studying the Phase 2 implementation of the America Inventors Act, which went into effect on September 16, 2012 and started to be tested on October 2, 2012.
In the little more than a month since AIA Phase 2 became testable we have already heard from a number of our Patent Bar students who have taken the Patent Exam since the USPTO added AIA Phase 2 to it. The good news — in addition to our usual exemplary pass rate — is that the sample questions we prepared for all the supplementary materials, from KSR and Bilski all the way through AIA Phases 1 and 2, are very, very predictive of the questions you’ll see on the actual Exam. Student after student has told us that if you can handle the questions we have added to Patware (the “AIA Phase 2 Mini-Exam” was just recently added), you can handle all the questions the USPTO will ask you on the Exam.
As a part of this all-access look behind the scenes I interviewed Q. Todd Dickinson, the AIPLA Executive Director who is also a former Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office. This interview took place at the conclusion of our day together.
In this segment of my two-part interview with Todd Dickinson we start by discussing how the AIPLA manages the daunting task of taking positions in virtually every IP issue that arises. We then transition into discussing first-to-file and the American Invents Act.
Without further ado, here is Part 1 of my exclusive interview with Todd Dickinson.
Todd Dickinson, AIPLA Executive Director, October 26, 2012, starts the panel discussion.
The annual meeting of the American Intellectual Property Law Association (AIPLA) was held last week in Washington, DC at the Marriott Wardman Park Hotel. The event was attended by well in excess of 2,000 attorneys predominantly from the United States, but with a strong contingency of attorneys from foreign firms. I personally had the opportunity to meet with attorneys from Canada, Japan, Korea and the United Kingdom.
One of the presentations I attended was the panel moderated by Todd Dickinson, who is the current Executive Director of the AIPLA and a former Director of the United States Patent and Trademark Office. Also on this panel were Judge Sharon Prost of the United States Court of Appeals for the Federal Circuit, USPTO Director David Kappos, Eli Lilly General Counsel Bob Armitage, Senior Counsel to the Senate Judiciary Committee Aaron Cooper and Oblon Spivak attorney W. Todd Baker.
Dickinson led an informative question and answer session centering on the expectations and early results from the various changes to the patent system implemented by the America Invents Act. The title of the panel discussion was simply – AIA – Will the New System Work? Not surprisingly, everyone was in agreement that the system will work, even if only because it has to work since now it is the law.
Guest Contributors: Sara Jeruss (left), Robin Feldman (center) and Joshua Walker (right).
Any discussion of flaws in the United States patent system inevitably turns to the system’s modern villain: non-practicing entities. They are known more colorfully as patent trolls, although the business model of non-practicing entities has appeared in copyright markets as well as well as in patent markets.
In the America Invents Act, Congress directed the nonpartisan Government Accountability Office (GAO) to conduct a study “on the consequences of patent infringement lawsuits brought by non-practicing entities.” At the GAO’s request, we provided data on non?practicing entities for five years (2007-2011) using a database from Lex Machina, formerly the Stanford IP Clearinghouse. The GAO requested only the coded data without analysis, and we provided this with the understanding that we would publish our own analysis of the data at a later time.
Our current article, which is in draft form and available at SSRN and the final study will be available from the Duke Law & Technology Review. We note that although the cases were compiled at the GAO’s request, all conclusions are our alone and not those of the GAO.
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