The United States Patent and Trademark Office (USPTO) released two Federal Register Notices on October 7, 2011, seeking written comments and announcing two public hearings for two studies the agency is required to conduct under the America Invents Act. Specifically, Congress is requiring the USPTO to study and report on the availability of prior user rights in foreign countries as well as options to aid small businesses and independent inventors in securing patent protection for their inventions. The USPTO reports for both studies are due in mid-January 2012.
“The objective of the written comments and hearings is to collect information from the public on the scope of the two studies,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Public participation in both the Prior User Rights Study and the International Patent Protection Study is necessary to assist the agency in preparing for Congress the most informed and accurate report possible.”
I was speaking with John White via telephone yesterday about the America Invents Act. Yes, John and I are thoroughly immersed in this legislation and coming up with wrinkle after wrinkle that you probably never thought about. Fun I know, but that is what two wild, crazy and tremendously charismatic patent attorneys talk about! In any event, I told him I was having difficulty and asked him — how do you describe prior user rights, post-grant review and supplemental examination simply? His response: “You don’t.” We went on to talk about how first to file isn’t all that simple either, although the name suggests otherwise. This thing, the monstrosity that is the America Invents Act, will be a full employment act for lawyers! But when is it ever good for clients when it is good for the attorneys?
In any event, on this note I embark upon Part 2, which will seek to make sense of prior user rights, post-grant review, preissuance submission and patentability changes. This will leave inter partes review, supplemental examination and derivation proceedings for the finale — Part 3. I will endeavor to describe these in the most straight forward way possible, but I am going to completely punt on Section 18 as it pertains to business methods and post-grant review, at least for now. I just see no way to explain that in a “simple” way. Notwithstanding, look for an article on Section 18 soon (a relative term I know), along with an article about specific peculiarities and likely unintended consequences of the Act.
Senator Leahy (left) and Congressman Smith (left) at AIA signing.
The America Invents Act reshapes U.S. patent law in fairly profound ways with established major industries benefitting, but providing unwanted challenges for some. The final bill changes the US system to a first-inventor-to-file system. It creates several post-grant review mechanisms whereby 3rd parties can challenge another’s patent application, including the allowance of submission of prior art by 3rd parties and the creation of a new, post-grant administrative review proceeding. The financial sector will get additional tools to address long-held concerns over “business method” patents such as those at that heart of litigation involving several large banks and a company which holds patents on processes for securing checks electronically. The AIA also effectively bans the practice of patenting tax strategies. The bill also restricts the practice of plaintiffs in infringement cases joining together large groups of defendants who may have no business relation to each other.
The ink is hardly dry on the America Invents Act and Congress is already about to take money from the United States Patent and Trademark Office in violation of the promise of Congressman Rogers, who chairs the House Appropriations Committee.
It isn’t exactly a newflash to announce that Washington, D.C. is dysfunctional, anyone paying attention over the past few years has long since come to that conclusion. Thus, it is hardly breaking news to report that Congress is on the verge of passing a Continuing Resolution rather than actually doing their job and passing a budget for fiscal year 2012. Why do today what is required of you to fulfill the responsibilities of your job when you can just kick the can down the road? Of course, by so doing Congress will embark upon a path that will divert some $600 million from the USPTO during FY 2012.
The United States Senate passed the America Invents Act by a vote of 89-9 on September 8, 2011, which means that the much anticipated, discussed, reviled and acclaimed legislation (depending on your viewpoint) will become law very soon. According to Article I, Section 7 of the U.S. Constitution, the President has 10 days to sign the legislation or it would become law without his signature.
Article I, Section 7, in relevant part reads:
If any Bill shall not be returned by the President within ten Days (Sundays excepted) after it shall have been presented to him, the Same shall be a Law, in like Manner as if he had signed it, unless the Congress by their Adjournment prevent its Return, in which Case it shall not be a Law.
Thus, the question about when the America Invents Act will become the law of the land depends specifically on when it will be “presented to” President Obama. As of the writing of this articler there is nothing on the White House web page of pending legislation likely to be signed in the coming days. Since the Administration has been so vocally supportive of the bill an Obama signature seems virtually guaranteed in the coming days, and then the fun starts.
What should you expect from President Obama’s jobs speech tomorrow? Sadly, not much.
The president says that’s the fault of recalcitrant Republicans in Congress. Republicans in Congress say it’s the fault of a president who is hostile to business.
But the real reason we are not putting people back to work three long years into the recession is that Washington is afflicted with a totally-bipartisan cluelessness about how to create jobs.
As I argued in my “Labor Day Message for President Obama” in the Wall Street Journal last weekend, there is a great deal that the president and congress can do to create millions of new jobs quickly, if only they would stop their ideological bickering and instead “focus on a few practical, low-cost measures that we know will create lots of jobs quickly.”
The United States Senate voted 93 to 5 earlier this evening to end debate on patent reform, which should set up a vote on H.R. 1249 in the coming days.
The United States Senate first passed its own version of patent reform, dubbed the America Invents Act – S. 23, in February 2011. The House of Representatives took up patent reform in the Spring, ultimately passing H.R. 1249, also dubbed the America Invents Act. Because the House version of patent reform was not identical to the Senate version of patent reform the legislation pinged back to the Senate. Immediately before the Senate went out on its annual August recess Senate Majority Leader Harry Reid (D-NV) filed for cloture on H.R. 1249, scheduling the Senate’s first day back after the August recess as the day for the cloture vote. That cloture vote is what passed by a vote of 93-5.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more.
Without hesitation I recommend One Simple Idea and think it should be required reading for any motivated inventor. There is so much to like about the book and so much that I think author Stephen Key nails dead on accurate. The book is educational, information and inspirational. For the $14 cover price it is essential reading.
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