Posts Tagged: "America Invents Act"

The treatise presents both practical and strategic advice regarding the preparation, prosecution, evaluation, enforcement, and litigation of U.S. utility patents after the passage of the AIA and effectively conveys the material in a well-organized fashion. Detailed coverage of U.S. patent law, including pre-AIA context and associated rules and guidelines, are incorporated. Particularly impressive are the “Practical Tips” the authors include in highlighted areas on many pages. Numerous graphs, tables, and pictorial illustrations assist readers’ comprehension of the material. Each chapter begins with a highly detailed Table of Contents, subdivided for ease of use. The authors write clearly and include helpful cross-references to case law, USPTO practice matters, legislation, and primary and secondary sources.

I represent MCM Portfolio LLC, which is seeking Supreme Court review of a recent decision of the United States Court of Appeals for the Federal Circuit upholding the constitutionality of the inter partes review (IPR) procedures created by the America Invents Act (AIA). The petition is available here. Amicus briefs in support of the petition are being filed May 31. We argue that IPR violates Article III of the Constitution, which vests the judicial power in the federal courts, and also the Seventh Amendment, which guarantees a right to a jury in civil litigation.

After much public comment and debate, new changes to rules for post-grant administrative trials before the Patent Trial and Appeal Board (PTAB) go into effect on May 2, 2016. These final rule changes, which are the second set of changes since the America Invents Act (AIA) went into effect, are the culmination of a series of PTAB listening tours and public comments to the rule change proposals published in August 2015. Among other things, the new rules are intended to address concerns that patent owners were at a disadvantage in responding to patent challenges, particularly during the pre-institution stage of a PTAB proceeding. The rule changes also introduce certification requirements for documents filed with the PTAB, confirm the broadest reasonable interpretation (BRI) standard, as well as exceptions to the BRI standard for expiring patents, and adopt an appellate-style word count limit for major briefs.

The Young Inventor’s Showcase is nothing short of an amazing academic program in 56 Houston area grade schools. The program teaches grade school kids the entire innovation system from problem identification to the store shelves. The class wraps up with an inventor competition judged by members of the Houston Inventors Association… All of these inventions were disclosed without even a provisional patent application being filed. This isn’t just a concern for the Houston Young Inventors Showcase, but is a problem for all science fairs and similar events. It has always been a bit of a concern because once you disclose an invention it is no longer patentable in many countries, but up until March of 2013 disclosure in the U.S. prior to filing a patent application did not create a patent problem here.

Simply stated, Senator Ted Cruz (R-TX) did not deserve the F foisted on him by the Engine study or amplified by the reporting by Wired and Ars Technica. Notwithstanding the inexplicable F given to Senator Cruz, the biggest error in the “report card” related to something that never happened. Senator Marco Rubio was given a B based on his vote in favor of the America Invents Act (AIA). The problem is that Senator Rubio missed that vote on the AIA and is also on record saying that had he been present he would have voted against the AIA. Indeed, there are many other inaccuracies and misleading statements that collectively left us wondering if the scoring of this “report card” intentionally misleads the public and reinforces the stereotype that the tech community only likes Democrats.

In 2008 the surrogates did at least increase the emphasis on having some form of post grant challenge procedure in the bill that would pass Congress and be signed into law. Their work began to surface in March 2008 by way of surrogates speaking at public and private events focused on innovation related issues. While the campaigns today may not spend many bytes on patent policy soon enough surrogates will be convening at events around the country to discuss innovation policies. If innovation policies or broader tech issues matter the time to get involved is now. As the field of candidates continues to narrow it will become increasingly more difficult, and more costly, to influence policy.

The Patent Act itself clearly and unambiguously states that patents are property. See 35 U.S.C. 261. Unfortunately, this property right of Constitutional significance has increasingly come under attack over the last decade. Without either substantial legislative fixes, or a new Administration that orders a new Director of the USPTO to rewrite post grant regulations, no single case could undue the significant damage that has been done to the U.S. patent system by the creation of the PTAB and post grant proceedings. That being said, Cuozzo does offer an excellent opportunity to say enough is enough and fight to protect a Constitutionally critical property right our most respected Founding Fathers thought to be absolutely critical.

For hoarders, once an item comes into their possession, such individuals develop an unreasonable emotional attachment to it. As these possessions, many of which are viewed by others as worthless, continue to accumulate, they become both a health and safety hazard to the hoarders and those about them until some concerned party, typically a family member or a governmental authority, intervenes. Much the same problem is found in some managers of patent portfolios.

When people say that inventors do not need to start with a patent application and can wait to file I cringe. It is not that this is universally bad advice, but it certainly comes with a lot of risk, even more risk now that the United States is a first to file country with only an infinitesimally small grace period remaining. Today it is imperative that the U.S. first to file laws be interpreted to mean file first before you disclose anything, demonstrate your invention publicly or offer it for sale. The risk of waiting to file a patent application is simply too great and may forever foreclose the ability to obtain a patent.

Libertarians believe in property rights and government protection of those rights as one of the few necessary requirements of government. Ownership of property and free markets leads to competitive production and trade of goods, which in turn leads to prosperity for all of society. Intellectual property is property like other forms of property, and so government must protect IP as it protects other forms of property because it too leads to competition and trade and prosperity. Libertarians should encourage a strong patent system and object to any “reforms” that limit intellectual property ownership or introduce more government regulation than is required.

The patent market had an amazing bull run from the late 1980’s through 2012. The peak was 2011 to 2012 when we saw a number of multi-billion dollar patent sales and patent-driven acquisitions. The patent market started slowing down substantially shortly thereafter. Many blame the America Invents Act (AIA), which introduced a variety of ways to inexpensively challenge the validity of patents in administrative proceedings at the patent office. All of a sudden the confidence that once a patent was issued it was valid was shaken. However, the AIA was only part of the problem.

3D printed human organs are coming increasingly close to being a reality according to several reports. In addition to potentially saving thousands of lives every year, this ground-breaking technology raises issues related to patent law that cannot be ignored. Are human organs and/or tissues that are created through 3D printing process that use naturally-occurring cells eligible for patenting? Or are such organs and tissues considered to be products of nature and therefore ineligible for patenting? The America Invents Act (AIA) creates serious questions, as do some recent Supreme Court ruling on patent eligibility.

Because the AIA does make foreign priority claims relevant, the USPTO will now require that any correction of the identification of the foreign application (by application number, country, intellectual property authority, and filing date) in a foreign priority claim after the time period for filing a priority or benefit claim be via a petition to accept an unintentionally delayed priority claim. Once the petition is granted in a pending application there will be a publication of a corrected patent application publication reflecting the accurate foreign priority claim information.

In general, the courts distinguish between functions and algorithms, and they require patent applicants to disclose algorithms to cure perceived deficiencies in functions. The problem with this line of reasoning is that both algorithms and functions under 35 U.S.C. § 112(f) are composed of the same things: steps. So the result of the algorithm requirement is to simply make patent applicants “fix” one step by specifying more steps. Accordingly, if the algorithm requirement is taken to its logical conclusion, then each step would be fixed with more steps, and each of those steps would be fixed with even more steps, like Russian dolls. Instead, the courts do not take the algorithm to its logical conclusion and, instead, only require a single layer: the original step and the further steps (i.e., algorithm) for it. This is arbitrary, confusing for patent applicants and examiners, and a poorly calibrated solution to concerns about software patents.

The market price plummeted in the second half of 2011, and set off the downward spiral that stormed through the second half of 2013 when the market price reached the record low. There had been no discernible macroeconomic factors to justify the drastic decline in market price during the two years leading up to the end of 2013. As a result, the industry-specific factors might have been the culprit, among which the most prominent is the enacting of America Invents Act (AIA) in September 2011, as demonstrated by the econometric analysis above.