Since prior user rights first came up as an issue in the patent reform debate I have been opposed to the idea.  Whether I like prior user rights or not, the reality is that prior user rights are now a part of U.S. patent law.  Nevertheless, the debate goes on about whether prior user rights are a good idea.  In fact, the United States Patent and Trademark Office is tasked through the America Invents Act with conducting a Prior User Rights Study.  To facilitate this study a public hearing on prior user rights was held on October 25 in the Madison Auditorium at its Alexandria, Virginia campus of the USPTO.

With this in mind I thought I would once again revisit prior user rights. One of the arguments I have heard recently supporting prior user rights is that a corporation that is going to invest billions of dollars into a facility should know that their investment is safe and that the plant can’t be shut down by a later filed patent application.  This argument is so specious as to be nearly laughable if you ask me.  This strikes me as just more of corporate America wanting the government to save them from themselves.

The Tenth Circuit handed down a message in a recent case brought by DISH Network against its Commercial General Liability (CGL) carriers, where DISH Network Corporation had been sued on patents claiming call center technology. Although unlikely, some CGL policies may still be interpreted to have some coverage for patent infringement claims if the patent is claimed to be on a way of advertising a product. In DISH Network Corp. v. Arch Specialty Ins. Co., __F.3d__ No. 10-1445 (10th Cir. Oct. 17, 2011), DISH argued that the CGL coverage for “advertising injury” was potentially triggered by the asserted patents’ claims which purportedly included advertising or product promotion.

Prior to reaching the Tenth Circuit the district court held that the underlying complaint did not allege an “advertising injury” under the policies issued to Dish by the five defendant insurers. As a result, the district court granted the insurers’ motion for summary judgment, and Dish appealed. The Tenth Circuit reversed and remanded.  By so doing those who only casually review the decision or news stories related to it might take away the wrong message.

No doubt you have heard about the new law that is upon us in the land of patents; it’s in all the papers and on all the blogs.  The America Invents Act was signed by President Obama on September 16, 2011, and marks the largest single re-write of U.S. patent law ever.  Even the 1952 Patent Act pales in comparison because that was almost completely a codification of existing case law that had developed over the decades.  America Invents, however, embarks upon a new path and leads us into the great unknown in many respects.

Those preparing to take the patent bar exam or contemplating sitting for the exam at some point in time in the future likely don’t want to hear that U.S. patent law is heading into the great unknown.  How can you be expected to take a pass the patent bar examination under these circumstances?  First: Relax. You do not have to unlearn or forget what you are currently learning, or soon will learn, for the patent exam or for your practice life after you pass the exam.  That being said, the sooner you do take the patent bar exam the better off you will be!

It is virtually impossible to in any intellectually honest way truthfully determine what the legislative intent of Congress was for any particular piece of legislation.  Justice Antonin Scalia has railed against the use of legislative history for decades, saying “legislative history is irrelevant when the statutory text is clear,” and referring to the “legal fiction” that legislative history, including Committee Reports, actually reflect the intent of the Congress.  This is, of course, because it is exceptionally easy to get something into the legislative history, so anything that appears in the legislative history may only be the view of one particular Member of Congress, or worse the view of a lobbyist paying for access.  There is also the problem associated with Members of Congress saying things they simply don’t understand, and the reality that the legislative history cannot be cross examined.  Even Committee Reports are at best the view of a majority of a group that makes up a small fraction of the overall Congress.  It seems a fools errand to rely on legislative history in all but the rarest case, and Scalia’s view seems to be the prevailing view of this Supreme Court.

Notwithstanding the inherent unreliability of legislative history and the truly scary prospect of trying to get inside the head of Members of Congress, it seems fairly clear to me that the America Invents Act, which was signed into law by President Obama on September 16, 2011, contains at least a handful of things that can only be characterized as unintended consequences.  Among them are: (1) U.S. patents issued from foreign filings will be prior art as of the foreign filing date; (2) commonly owned patent applications cannot be used against each other for novelty purposes; and (3) the creation of an post grant challenge limbo because of the delay in initiating post-grant review procedures.

Earlier today the United States Patent and Trademark Office tweeted the following: “Follow Einstein’s and Jefferson’s footsteps…become a #Patent Examiner. Apply to the USPTO by Nov. 1.” Yes, the USPTO is hiring more examiners, which is very good news.

The fiscal year 2011 results are now in and the backlog of untouched patent applications as of the end of FY 2011 was 669,625, so there is plenty of work to be done and hiring more patent examiners has to be a part of the solution.  But did you know that Albert Einstein was a patent examiner?  How about Thomas Jefferson?  Jefferson is largely regarded as the first U.S. patent examiner.  Thomas Jefferson (then Secretary of State), along with Secretary of War Henry Knox, and Attorney General Edmund Randolph, made up the first patent examination panel for the United States of America.  Einstein, on the other hand, worked for the Swiss Patent Office.  It was while working for the Patent Office that Einstein came up with his theory of relativity.

As part of a series of programs complementing The Great American Hall of Wonders exhibition, the United States Patent and Trademark Office (USPTO) and the Smithsonian American Art Museum will sponsor a free, two-day Inventors Symposium on October 27-28, 2011, in the museum’s Nan Tucker McEvoy Auditorium.

On Thursday, October 27, 2011, the first day will focus on the recently enacted America Invents Act and its impact on independent inventors and small businesses. Registration will begin open at 1pm with programming starting at 2pm and running through 5:30pm.  Thursday’s program will conclude with a networking reception from 5:30pm to 7:00pm.  Those who have attended USPTO events in the past know that these networking receptions are in many respects the highlight of the day.  USPTO Officials take time to mingle and speak with independent inventors who have questions or who just want to meet the people in charge of administering the Office.  USPTO networking receptions are among the best networking events you will likely ever attend.

I have done quite a bit of writing about the America Invents Act, but I have been a bit derelict in providing the sequel to America Invents: A Simple Guide to Patent Reform, Part 1.  Part of the reason, if not the entirety of the reason, is that the major parts of the American Invents Act that remain are anything but simple.

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.

By now virtually everyone in the patent and innovation communities knows that on September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act.  This is an enormous change to U.S. patent laws, likely the largest change in U.S. patent law since at least 1790.  The last major re-write was in 1952, and that wasn’t a re-write so much as a codification of case law that had developed over the previous decades.  This is a major change and one that must be thoroughly and completely respected in terms of breadth and depth.

A lot of arguing has been going on here on IPWatchdog.com about certain portions of the so-called first to file provisions contained in the Act.  Truthfully, the new 102(b)(1)(B) is not written as clear as it probably could be, but I have steadfastly maintained that it provides only a personal grace-period, nothing more.  Many have criticized me at great lengths, and some have even told me via private e-mail they have stopped reading IPWatchdog because I am dead wrong.  I have even had a variety of entertaining discussions with Staffers on the Hill and a variety of senior attorneys and high ranking corporate counsel.  Notwithstanding those who vehemently disagree with me, with every new statement made by the United States Patent and Trademark Office my position seems to be further confirmed.

The grace-period provided to inventors is only a personal grace-period and subsequent disclosure that is not derived from the inventor will create a statutory bar to patentability.  My source?  The United States Patent and Trademark Office.

While to many Franklin Pierce Law Center is not a household name, in the intellectual property world Franklin Pierce is indeed a brand name that has achieved lofty distinction as a result of the great successes of its alumni. However, Franklin Pierce Law Center is no more.  The small, independent law school located in Concord, New Hampshire, has affiliated with the University of New Hampshire, and well on its way to what will inevitably become a complete merger with UNH.  Already, the former FPLC is now the University of New Hampshire School of Law, but the unique spirit of Franklin Pierce has not been lost, and neither will the name be lost either.  The University of New Hampshire School of Law will formally open its new Franklin Pierce Center for Intellectual Property on September 30 and October 1 with an academic conference, panel discussions and a formal event attended by judges and legal scholars from across the country. 

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 America Invents Act, which just recently passed by the Congress and sent to the White House for President Obama’s signature, is the most significant patent reform legislation in decades, and it promises to change virtually all of patent practice as we know it over the next 18 months. Some pieces of the legislation will go into effect almost immediately, but other aspects of the legislation will become effective 12 months and 18 months after the bill becomes law. We are in for the largest set of changes anyone practicing has ever faced. The 1952 Patent Act codified what was in existence, the American Invents Act shakes the very foundation of patent law and patent practice.

The Practising Law Institute will host a one-day program titled America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice. This event will be on Monday, September 26, 2011, and will take place live at PLI’s San Francisco Center in downtown San Francisco, California. The program will be webcast live over the Internet for all those who are unable to make it to the live location.

It looks like my prediction on Tuesday that the Senate would pass H.R. 1249, the America Invents Act, prior to President Obama’s much anticipated jobs and economy speech that begins at 7:00pm ET today, Thursday, September 8, 2011.  The Senate voted to pass H.R. 1249 and send the House version of the America Invents Act to the White House for President Obama’s signature by a vote of 89 to 9.  The Coburn Amendment, which would have once and for all put an end to fee diversion, was unsuccessful, being tabled by a vote of 50 to 48.

Beginning at 4:00pm ET the Senate started considering three separate amendments to H.R. 1249.  The passage of any would have required the legislation to ping back to the House of Representatives, but that was not to happen.