America Invents: How the New Law Impacts Your Patent Practice

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.

PLI has assembled a team of experienced patent practitioners who have closely followed the patent reform debate, and I am honored to be among those who will speak at this event. The faculty will discuss the realities of the new legislation and how the new law will immediately impact the patenting process for businesses and attorneys. If the e-mails we have exchanged furiously over the last several weeks in preparation are any indication this program will present a thorough and comprehensive review of the major aspects of the legislation. The plan is to dig deep and give the patent practitioner actionable information, recommendations and things to look out for. Legislative language will be examined carefully, as well as likely interpretations and problem areas that will almost certainly remain uncertain until the Federal Circuit and perhaps the Supreme Court weighs in.

As with any major legislation we can anticipate that legislative language will be questioned, leading to a flurry of cases interpreting the statute.  With legislation that is so fundamentally sweeping as the America Invents Act the likelihood that there are legislative traps for the unaware increases.  Things will be uncertain for a while, requiring many patent attorneys and patent agents to cautiously advise clients.  The PLI faculty has scoured the legislation and is ready to bring you up to speed.

The new law contains several provisions that will become effective within days of signing, as well as others that will require rulemaking and time to implement. The USPTO is already taking action to prepare proposed rules and guidelines that may be needed soon to implement the proposed legislation quickly.

The America Invents Act contains several controversial provisions:

  • the change from first to invent to first to file and Section 102 prior art issues
  • expanded prior user rights
  • post grant review: new ways to challenge issued patents
  • PTO fees and funding: more work for the USPTO without any guarantee that fee diversion will end

These and other aspects of the America Invents Act will be discussed.

Can you tell I am excited?  I am looking forward to this program and hope to see you there in San Francisco, or to have you virtually join us via webcast.

Program Schedule —9:00 a.m. – 1:30 p.m.

9:00 a.m. — Program Overview
Denise M. Kettelberger, Ph.D.

9:15 a.m — A New 102: Reform, Not Recodification
Robert A. Armitage, Brad D. Pedersen will lead with panel roundtable discussion.  Comments and questions from the live and Internet audience taken.

10:15 a.m. —  First Inventor to File and Other Patent Issues in AIA
Robert A. Armitage, Brad D. Pedersen will lead with panel roundtable discussion.  Comments and questions from the live and Internet audience taken.

11:15 a.m. — Networking Break

11:30 a.m. —  Post-Grant Review, Reexamination, Prior User Rights and Litigation Issues
Stephen G. Kunin, Eugene R. Quinn, Jr. will lead with panel roundtable discussion.  Comments and questions from the live and Internet audience taken.

12:30 p.m. —  Making Sense of It All; So much to do, so little time for the USPTO
Denise M. Kettelberger, Ph.D. (moderator); Robert A. Armitage, Janet A. Gongola (invited), Stephen G. Kunin, Brad D. Pedersen, Eugene R. Quinn, Jr.

1:30 p.m. — Adjourn

Faculty

Chairperson:

Denise M. Kettelberger, Ph.D.
Faegre & Benson LLP
Minneapolis

Robert A. Armitage
Senior Vice President and General Counsel
Eli Lilly and Company
Indianapolis

Janet A. Gongola (invited)
Associate Solicitor
United States Patent and Trademark Office, Solicitor’s Office
Alexandria

Stephen G. Kunin
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P
Alexandria

Brad D. Pedersen
Patterson Thuente Christensen Pedersen, P.A.
Minneapolis

Eugene R. Quinn, Jr.
President and Founder, IPWatchdog.com
IP Watchdog, Inc.
Waterford, Virginia

Program Attorney: John M. Mola

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Join the Discussion

10 comments so far.

  • [Avatar for step back]
    step back
    September 14, 2011 02:11 pm

    mark it on your calendars: 9/16/2011 –a day that will live in patent law infamy:

    One week after going to Richmond to deliver a speech on jobs, President Obama will cross the Potomac River again Friday to sign a key piece of legislation in Alexandria.

    According to a White House official, the Thomas Jefferson High School for Science and Technology on Braddock Road will host the signing ceremony for the America Invents Act, a long-awaited measure that overhauls the nation’s patent system.

    source: http://www.washingtonpost.com/blogs/virginia-politics/post/obama-to-sign-patent-bill-in-alexandria/2011/09/14/gIQAgyLzRK_blog.html

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    September 14, 2011 10:17 am

    Has anyone put up a “track changes” version of the passed bill? (i.e. the current law amended in track changes mode to reflect the new bill)

  • [Avatar for yoobee]
    yoobee
    September 13, 2011 01:23 pm

    Gene,

    Thanks for the link on the status of the bill.

  • [Avatar for American Cowboy]
    American Cowboy
    September 13, 2011 12:09 pm

    I don’t understand this White House. They want Congress to ratify free trade treaties, but don’t send them to the Senate to allow it to ratify. They trumpet this Patent Reform Act as wonderful and have the Senate rush to pass it last week and then the Pres doesn’t bother to sign it.

    I can only conclude that they are either 1. incompetent, 2. lazy or 3. talk out of two sides of their mouths.

    I choose to be charitable and pick number 1.

  • [Avatar for Gene Quinn]
    Gene Quinn
    September 13, 2011 11:19 am

    Patent Leather-

    Look for more on IPWatchdog.com about post grant review at the end of September and into early October. Working on some stuff to publish, and this PLI program will provide me with good fodder. I’m looking forward to hearing Steve Kunin on the topic, as well as others.

    -Gene

  • [Avatar for Gene Quinn]
    Gene Quinn
    September 13, 2011 11:17 am

    AC-

    Yes. The Waterford fall festival is the first weekend in October. As yet I haven’t been able to make it because PLI always has a patent bar review course scheduled then, but this year we are in NYC this week, so I will be able to attend. I hear so many good things about it.

    For anyone in the Northern VA or DC area the fall festival in Waterford will be October 7, 8 & 9, 2011. Hope to see you there!

    -Gene

  • [Avatar for Gene Quinn]
    Gene Quinn
    September 13, 2011 11:06 am

    Yoobee-

    Thanks for that catch. Jumped the gun a little. I just updated the first sentence to more accurately reflect that it has passed through Congress but is awaiting signature.

    As of 11:09 am ET the America Invents Act is still listed on the White House website as pending legislation that will shortly be signed by the President. See:

    http://www.whitehouse.gov/briefing-room/pending-legislation

    -Gene

  • [Avatar for patent leather]
    patent leather
    September 13, 2011 10:42 am

    How is post grant review different from reexamination? Anyone have a good link explaining the new PGR?

  • [Avatar for American Cowboy]
    American Cowboy
    September 13, 2011 09:38 am

    Gene, I didn’t realize that you live in Waterford.

    Do they still have annual fall festival, where folks come out from the city and fantasize about the idyllic village life they miss while sitting on the Beltway?

  • [Avatar for yoobee]
    yoobee
    September 12, 2011 09:47 pm

    I noticed you reference the “just-enacted America Invents Act”. Did the President sign the bill today? I would like to know so that I can figure out the timing for the various provisions of the bill.