Archive for August, 2011

Immunization Methods are Patent Eligible

August 31, 2011

In December 2008, a Federal Circuit panel rejected claims concerning methods of immunization and determining an immunization schedule as not being directed to patentable subject matter.  The 70 word opinion authored by Judge Moore left many questions as to why the claim was so rejected.  After issuing its decision in Bilski v. Kappos, the Supreme Court issued a GVR order where it directed the Federal Circuit to reconsider its earlier opinion in light of Bilski.  The newly constituted panel included Chief Judge Rader and Judges Newman and Moore.

Today, the Federal Circuit issued a 57 page set of opinions to replace the original 70 word opinion.  This time, the court held that at least some of the claims are indeed directed to patentable subject matter.  Classen Immunotherapies, Inc. v. Biogen IDEC.

The case concerned 3 patents, the ‘139, ‘739, and ‘283 patents.  Claim 1 of the ‘283 patent states:

A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises:

immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and

comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.

Claim 1 of the ‘739 is said to be representative of both the ‘139 and ‘739 patent.  It states:

A method of immunizing a mammalian subject which comprises:

(I) screening a plurality of immunization schedules, by

(a) identifying a first group of mammals and at least a second group of mammals, said mammals being of the same species, the first group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a first screened immunization schedule, and the second group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a second screened immunization schedule, each group of mammals having been immunized according to a different immunization schedule, and

(b) comparing the effectiveness of said first and second screened immunization schedules in protecting against or inducing a chronic immune-mediated disorder in said first and second groups, as a result of which one of said screened immunization schedules may be identified as a lower risk screened immunization schedule and the other of said screened schedules as a higher risk screened immunization schedule with regard to the risk of developing said chronic immune mediated disorder(s),

(II) immunizing said subject according to a subject immunization schedule, according to which at least one of said infectious disease-causing organism-associated immunogens of said lower risk schedule is administered in accordance with said lower risk screened immunization schedule, which administration is associated with a lower risk of development of said chronic immune-mediated disorder(s) than when said immunogen was administered according to said higher risk screened immunization schedule.

Majority Opinion

The court determined that the claims of the ‘739 and ‘139 patents are directed to patentable subject matter, while affirming the district court’s invalidity ruling regarding the claims of the ‘283 patent.

In the opinion, Judge Newman was quick to note that issues regarding whether the claims meet the novelty, non-obviousness, or § 112 issues were not before the court, that is, the claims may still be invalid under another section of the Patent Act.

With respect to the patent-eligible claims, the district court held that the claims include mental steps.  The majority of the Federal Circuit held, however,  that the presence of a mental step is not fatal to patent eligibility.  Clearly, the immunization step cannot be performed within the mind.  These claims are directed to a specific, tangible application, and are thus patent eligible.

We conclude that the immunization step moves the ’139 and ’739 claims through the coarse filter of §101, while the abstraction of the ’283 claim is unrelieved by any movement from principle to application.

The court distinguished the ‘283 patent claims from those at issue in Prometheus relating to methods of calibrating drug dosages.  The court found those claims to be patent eligible due to the transformation of the drugs within the body.  The ‘283 claims, however, does not include such a transformation.

Judge Rader’s Additional Views

Chief Judge Rader provided an opinion styled “Additional Views” on patentable subject matter that were joined by Judge Newman.  He argued that the court should decline to limit the broad scope of patent eligibility.  He provides a great deal of guidance for patent attorneys and applicants on claim drafting and patent eligibility.

Indeed it is difficult to “invent” any category of subject matter that does not fit within the four classes acknowledged by Title 35: process, machine, [article of] manufacture, or composition of matter.
***
[C]areful claim drafting or new claim forms can often avoid eligibility restrictions. Eligibility then becomes a game where lawyers learn ingenious ways to recast technology in terms that satisfy eligibility concerns.

Judge Rader cited Beauregard and Swiss style claims as examples of the type of claims that would be patent eligible.  As for Beauregard claims, perhaps he hasn’t read Cybersource?

In some countries, such as the European Union, claims directed to methods of treatment are not patent eligible.  Applicants use Swiss style claims to get around this prohibition.  Swiss style claims recite the use of a compound for the manufacture of a medicament for the treatment of a condition, rather than a method of treating the condition itself.  The claim scope is generally very similar, but by using the Swiss style format, applicants can avoid prohibitions on patenting methods of treatment.

Judge Rader calls these types of claim drafting techniques “gamesmanship” that do nothing but add to the cost of patent prosecution and litigation.  Further, many applicants have poorly drafted claims that do not meet the requirements of these “games” and are thus excluded from obtaining a patent.

As an example of how this affects real word innovation, Judge Rader cited the field of biotechnology.  The US provides relatively strong protection to advances in biotechnology, while Europe imposes significant restrictions.  As a result, most biotechnology innovation takes place here and not in Europe.

The effect of eligibility restrictions can send innovation investment elsewhere.

Dissent

Judge Moore, the original opinion author, dissented, arguing that none of the claims of any of the patents are directed to patent eligible subject matter.  The claims instead relate to a fundamental scientific principle so basic and abstract as to be unpatentable subject matter.  She further argued that she sees no difference in the scope of the claims between the ‘283 patent and the ‘139 and ‘739 patents.   Classen instead claims the scientific method itself as applied to the field of immunization. 

Because the claims contain no limitation on the type of drug to immunize with, the schedules that should be used for the immunization, the type of chronic immune disorder to look for, or any limitation in the control group. the claims are way too broad to be patent eligible.

Classen’s whole ’739 patent claim is to compare any two schedules for any drug and choose the one with fewer incidence of any chronic immune disease and then immunize.

She considers the immunization step in the claim to be post-solution activity that does not affect patent eligibility.  Judge Moore cites extensively to the Supreme Court’s unfortunate LabCorp. dissent.  Oh, how it still plagues us.

Finally, Judge Moore criticizes Judge Rader’s Additional Views as improper.  Rather than gamesmanship, she believes the court’s subtle distinctions lead to more careful claim drafting and better notice to the public of a claim’s scope.  Policy decision regarding patent eligibility should be left to Congress.  The court must take the facts of the cases that come to it, and apply existing statutes and precedent to the facts to reach as decision.

The Debate Continues

The Supreme Court has already agreed to review Prometheus in the October 2011 Term.  This case could also very well be headed back to the Supreme Court, which explains Judge Moore’s extensive dissent and Chief Judge Rader’s “Additional Views.”

Joint Inventors

August 31, 2011

Inventions can be conceived of and reduced to practice by multiple individuals.  Perhaps each makes a contribution to the overall invention.  Each individual is considered an inventor.

I am often approached by an individual or group of individuals that have worked together to develop a new invention for which they would like to file a patent application.  They could be friends, neighbors, college buddies, or maybe just acquaintances.  They almost never have any type of agreement, written or otherwise, regarding rights or ownership in the invention. 

Sometimes, one of the inventors asks me to represent him, but that it is not necessary for me to represent them both.  Maybe the second inventor is not available to talk to me or does not have time to review documents or some other reason.  As I always explain to the one inventor who requests my representation, this creates a number of problems.  For one thing, all inventors must review and understand the contents of a patent application and sign a declaration stating that they believe they are the first and true inventors of the invention described in the application and that they understand their duty of disclosure to the PTO.

The primary complication is that any communication I have with the inventor who is my client is protected by attorney-client privilege.  I cannot, however, discuss the matter with the non-client inventor because of the privilege.  If the inventor who is my client shares our conversations with the non-client inventor, the attorney-client privilege may be waived.  This could result in serious consequences if the inventors seek to license or enforce the patent at a later date.

I typically prevail on the joint inventors that I need to represent all of them in order to keep our communications protected by the privilege.  Even the case of representing all of the inventors individually can present problems. 

First, if the inventors have a disagreement or separation from the endeavor, I would not be permitted to represent any of them.  This represents a situation where there would be a conflict of interest in my representation.  If I previously represented inventors A and B on a matter and they have a disagreement, I cannot then represent only inventor A or only inventor B in the matter that is now potentially adverse to the interests of the other inventor who would become my former client.  In such a case, I would be forced to withdraw from the representation and the inventors would each be required to get new attorneys to handle the matter.  This results in needless duplication of efforts, delays, and added expense.

Second, as I detailed in an earlier post, there is the problem of “secret prior art.”  Inventor A conceives of an invention and files a patent application for it on Augut 31, 2011.  Later, Inventor A and Inventor B conceive of an improvement to Inventor A’s invention and file a patent application for it on September 30, 2011.  The jointly-filed application may be rejected over Inventor A’s earlier application if the improvement would have been obvious in light of Inventor A’s initial invention to one of ordinary skill in the art.  This is even true whether Inventor B is aware of Inventor A’s earlier application or not.

35 U.S.C. § 103(c)

Congress saw this as a potential problem and enacted a solution.

(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -

(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

Subsection (1) refers to the situation where the invention and the improvement are owned by the same entity or that the inventors are both obligated to assign to the same entity.  So, as above, if both Inventor A and Inventor B had an obligation to assign their inventions to a corporation or a jointly-formed entity, such as an LLC, this section precludes the use of Inventor A’s application as prior art for obviousness purposes against the application filed for the later improvement.

Subsection (2) refers to the situation where there is no single entity for assignment or obligation of assignment, but there is a joint research endeavor.  If there is a written agreement, and the improvement is invented as part of the agreement, then the original application cannot be used in an obviousness rejection of the application filed for the improvement.  Thus, if Inventors A and B had a written agreement signifying a joint research endeavor, this provision would provide them with a shelter from an obviousness rejection.

Inventors Should Have an Agreement to Take Advantage of 103(c)

What does all this mean?  When inventors get together with the idea of inventing or creating a new product, they should at least have at least a written joint research agreement.  In that case, none of the individual inventors’ prior inventions that might otherwise qualify as “secret prior art” can be used to reject any new inventions as obvious.  I understand that this may seem onerous, but at least a written agreement that states that the individuals intend to work together to develop a new product or invention is better than nothing.

An even better scenario is when the inventors form a common entity, such as an LLC, to which they obligate themselves to assign the inventions.  This permits the inventors to use the safe harbor provisions of § 103(c) and to avoid potential conflicts of interest when the inventors approach an attorney to represent them individually with respect to the inventions.  The attorney can represent the LLC rather than the inventors individually.  Then, if one of the inventors withdraws from the LLC, the attorney can continue to represent the LLC and does not necessarily need to withdrawn from the representation completely.

Offers for Sale Prior to Conception May Create On-Sale Bar

August 23, 2011

Yesterday, the Federal Circuit reversed a district court’s claim construction ruling of the term “wafer” in August Tech. Corp. v. CamTek, Ltd.  The court ruled that the term “wafer” does not include a plurality of wafers, but is only a single object.  The 6-year-old case was remanded to the district court with the Federal Circuit vacating rulings on infringement, invalidity, damages, and permanent injunction based on the claim construction ruling.

On-Sale Bar

That should be the end of the Federal Circuit’s opinion, right?  The case must be re-tried based on the Federal Circuit’s claim construction.  Unfortunately, the court didn’t stop there.  Judge Moore decided to provide six pages of dicta on a new interpretation of the on-sale bar.

Under the Supreme Court’s 1998 ruling in Pfaff v. Wells Elecs., Inc., an invention is considered to be “offered for sale” when it (1) was the subject of a commercial offer for sale, and (2) is “ready for patenting.”  The second prong meant that the invention was reduced to practice or sufficiently described that one of ordinary skill in the art could build the invention based on the description.  If the invention was on sale or offered for sale more than a year prior to the filing of a patent application, the invention was barred from receiving a patent under § 102(b).

In August Tech., the district court had instructed the jury that, in order for an offer for sale to be considered as prior art, the invention must be “ready for patenting” at the time of the offer.  This followed established law, including AIPLA Model Jury Instructions.  The Federal Circuit reversed, holding that:

if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it.  Before that time, he was merely offering to sell an idea for a product.

So, the court is now saying that if you offer to sell an invention as a mere idea, no offer for sale has taken place.  If, however, an invention is conceived of based on that idea, the earlier offer for sale of that idea transforms into an offer to sell the later-conceived invention; unless, of course, the offer to sell of the idea was repudiated in the meantime.

The unfortunate part of the opinion is that once the court reversed the claim construction ruling, its discussion of the on-sale bar is totally unnecesary dicta.

Implications

The dicta in the opinion is another lesson from the court to file patent applications sooner rather than later.  Assuming the rest of the court accepts the reasoning of August Tech., as of today, if an offer to sell an idea has been made, an inventor must file a patent application within one year of conception of the invention.  “Conception” refers to “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied to practice.”  In other words, conception is the mental act of thinking of the idea of the invention and how it would be implemented.

As noted by Hal Wegner, however, the opinion has much more drastic implications once the grace period is repudiated by the new patent reform bill.  The new patent reform bill only includes a grace period for disclosure activities by the inventor, but not for public uses or sales.  Therefore, under the reasoning of August Tech., if the inventor offered to sell an idea for an invention and then later conceives of the invention, that is, forms in his mind the complete and operative invention, he must file a patent application for the invention that same day.  Filing the application the next day will result in a loss of the ability to obtain a patent.

This opinion is another stake to the heart of patent rights by the America Invents Act.

Federal Circuit Rules Beauregard Claims are Unpatentable

August 22, 2011

Last week in Cybersource Corp. v. Retail Decisions, Inc., the Federal Circuit panel of Judges Bryson, Dyk, and Prost overruled a large amount of precedent in holding that claims to computer-readable media are directed to non-patentable subject matter if the media contain code for methods that themselves are non-patentable subject matter.

The patent-at-issue in the case was directed to a “method and system for detecting fraud in a credit card transaction between [a] consumer and a merchant over the Internet.”  The district court had granted summary judgment that both claims-at-issue in the case were invalid as directed to non-patentable subject matter.

Method Claim

Claim 3 of the patent was directed to the method:

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:
a) obtaining information about other transactions that have utilized an Internet address that is identified with the [ ] credit card transaction;
b) constructing a map of credit card numbers based upon the other transactions and;
c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

In the opinion by Judge Dyk, the Federal Circuit agreed with the district court that the method does not meet the machine-or-transformation test.  The patentee argued that the Internet constitutes a machine for purposes of the test.  The court held, however, that the Internet does not perform the step of detecting fraud, but is merely the source of the data. 

The court held that the claim was directed to an unpatentable “mental process.”  All of the steps can be performed by the human mind or by a human with a pencil and paper, as the claim is not limited to a particular algorithm.  Step (c) of the claim is “so broadly worded that it encompasses literally any method for detecting fraud based on the gathered transaction and Internet address data.”

Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.

Computer-Readable Media Claim

The court next turned to claim 2, a Beauregard claim, directed to a computer readable medium that includes program instructions for performing a particular method.  Such claims have been considered patentable subject matter since at least 1995 when the Federal Circuit issued its opinion In re Beauregard.

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:
a)obtaining credit card information relating to the transactions from the consumer; and
b)verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent,
wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,
wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;
[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
[b] constructing a map of credit card numbers based upon the other transactions; and
[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

The court characterized the claim as “nothing more than a computer readable medium containing program instructions for executing the method of claim 3.”  Within the parlance of § 101 of the Patent Act, claim 2 is directed to a “manufacture” rather than a “process.”  The court was not so moved.

Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.  Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information.

Incredibly, the court therefore chose to analyze claim 2 as a process claim instead of a manufacture claim.  The court held that the “computer readable medium” limitation was merely incidental to the claimed process and does not impart any patentable limitation to the claim.  The court attempted to distinguish several recent cases that had held otherwise on the basis that the processes involved steps that could not be performed entirely within the human mind.  Those methods were apparently more complex than the process claimed in Cybersource.

On the computer-readable media claim, the Federal Circuit overruled a great deal of precedent and is in conflict with a great deal more, including some that it attempted to distinguish.  The opinion calls into question literally tens of thousands of issued patents that were patentable under prior court precedent.  Some are even suggesting that this case could have implications for further review of Myriad.

Hopefully, the court will review this case en banc, as it is simply too sweeping a reversal of settled law to permit repudiation by a panel of the court.

PTO Issues U.S. Patent No. 8,000,000

August 17, 2011

Yesterday, the PTO issued U.S. Patent No. 8,000,000.  The Patent for “Visual Prosthesis” was issued to Second Sight Medical Products of Sylmar, California.  The application was originally filed in October 2007 and relates to a visual prosthesis to provide neural stimulation for the creation of artificial vision.

LOOKING BACK

The current system of numbering patents began in 1836.  Prior to that 9,957 patents had been issued.  Here’s a look back at some milestone patents.

7,000,000

 U.S. Patent No. 7,000,000 was issued Feb. 14, 2006 to E.I. du Pont de Nemours and Co., entitled “Polysaccharide Fibers.”

6,000,000

U.S. Patent No. 6,000,000 was issued Dec. 7, 1999 to 3Com Corp. of Santa Clara, California, entitled “Extendible Method and Apparatus for Synchronizing Multiple Files on Two Different Computer Systems.”

5,000,000

U.S. Patent No. 5,000,000 was issued Mar. 19, 1991 to the University of Florida, entitled “Ethanol Production by Escherichia Coli Strains Co-Expressing as Zymomanus PDC and ADH Genes.”

4,000,000

U.S. Patent No. 4,000,000 was issued Dec. 28, 1976 to Robert L. Mendenhall of Las Vegas, entitled “Process for Recycling Asphalt Aggregate Compositions.”

3,000,000

U.S. Patent No. 3,000,000 was issued Sept. 12, 1961 to General Electric Co., entitled “Automatic Reading System.”

2,000,000

U.S. Patent No. 2,000,000 was issued Apr. 30, 1935 to Edward G. Budd Mfg. Co. of Philadelphia, entitled “Vehicle Wheel Construction.”

1,000,000

U.S. Patent No. 1,000,000 was issued Aug. 8, 1911 to Francis H. Holton of Akron, Ohio entitled “Vehicle Tire.”

500,000

U.S. Patent No. 500,000 was issued June 20, 1893 to Edward S. Hyde of Dubuque, Iowa entitled “Combined Flush Tank and Manhole.”

 

100,000

U.S. Patent No. 100,000 was issued Feb. 22, 1870 to John Anderson of Brooklyn, New York entitled “Improved Sun-Bonnet for Horses.”

10,000

U.S. Patent No. 10,000 was issued Sept. 6, 1853 to Benjamin Irving of Green Point, New York entitled “Improved Paddle-Wheel.”

1,000

U.S. Patent No. 1,000 was issued Nov. 3, 1838 to Fowler M. May of Catskill, New York entitled “Spring for Railroad Cars.”

10

U.S. Patent No. 10 was issued Aug. 10, 1836 to Bariah Swift entitled “Dye-Wood and Dyestuff Cutting and Shaving Machine.”

1

U.S. Patent No. 1 was issued July 13, 1836 to John Ruggles of Thomaston, Maine entitled “Locomotive Steam-Engine for Rail and Other Roads.”

LOOKING AHEAD

When will the PTO issue Patent No. 9,000,000?  10,000,000?

Patent No. Days
1  
1,000,000 27,418
2,000,000 8,666
3,000,000 9,632
4,000,000 5,586
5,000,000 5,194
6,000,000 3,185
7,000,000 2,261
8,000,000 2,009

 As seen in the chart above, the PTO is issuing patents much more quickly now than it has in the past.  No. 8,000,000 can only 5 1/2 years after 7,000,000.  If the rate continues to increase, we could see U.S. Patent No. 9,000,000 before the end of 2016 and 10,000,000 in early 2021.

Patent Reform Notes

August 15, 2011

Given Sen. Harry Reid’s (D-NV) push for cloture on patent reform and the Senate’s previous 95-5 approval vote, and the more pressing budgetary issues facing the country, passage of H.R. 1249 seems inevitable.  The bill is littered with problems, but the number one problem is that, unlike the Senate bill, it does not guarantee an end to fee diversion.  Therefore, without permitting the PTO to keep all of its collected fees, adding additional requirements to the PTO in the form of post-grant oppositions and other new procedures will only add to the PTO’s backlog and pendency problems.

Fee Diversion

Make no mistake about it.  Without the guarantee of S. 23 to end fee diversion, diversion will continue.  Congress views PTO fees as part of the general budget that it is free to use as it pleases.  It then allocates another amount of money to the PTO to fund its operation.  Congress has never allocated more than the PTO has collected, but it has allocated nearly $1 billion less than what the PTO has collected over the past 10-15 years. 

The result is, of course, an additional tax on PTO users.  Tea Party members who have pledged not to raise taxes are doing exactly that when they steal money from PTO users for the general budget.  Congress has already robbed the PTO of $100 million of collected fees in FY2011.

The debt ceiling fight resulted in a serious push to cut spending by the federal government.  The Tea Party and other members of the Republican Caucus have refused to permit a tax increase of any kind.  Regardless of whether this is good or bad politics, Congress needs to decrease spending.  Congress considers PTO fees to be part of the general federal budget.  What’s do you think is going to happen to fees collected by the PTO?  What a great way to cut federal spending without raising taxes, right?

The legislation to raise the debt ceiling created a Super Committee that will be meeting to make recommendations on cutting federal spending further in an effort to reduce the deficit.  As pointed out by Hal Wegner, the members of the Committee include:  Rep. Jeb Hensarling (R-TX) co-chair; Sen. Patty Murray (D-WA) co-chair; Rep. Dave Camp (R-MI); Rep. Fred Upton (R-MI); Sen. Max Baucus (D-MT); Sen. John Kerry (D-MA); Sen. Jon Kyl (R-AZ); Sen. Pat Toomey (R-PA); Sen. Rob Portman (R-OH); Rep. James Clyburn (D-SC); Rep. Xavier Becerra (D-CA); Rep. Chris Van Hollen (D-MD).  Some have expressed hope that Sen. Kyl and Rep. Portman may stand up for the PTO to permit it to keep its fees.  We can hope, but don’t count on it.

PTO Seeks Comments on Patent Reform Implementation

Meanwhile, the PTO is so confident in quick passage of the bill in September, that it is seeking rule-making comments regarding its implementation before it has the authority to do so.  Some of the provisions of the Act would take effect immediately upon enactment, so the PTO will have a great deal of work to implement those portions immediately.  You have to give the PTO credit for being on top of it.  Comments can be sent to aia_implementation@uspto.gov.

Another Huge Spike in Application Filings?

Some provisions of the Patent Reform Act will take effect 18 months after its enactment, most notably the change from first-to-invent to first-to-file.  Assuming September passage, this would put the 18 month date at March 2013. 

As Prof. Crouch at Patently-O and others have noted, the last change to patent application procedure of this magnitude occured on June 8, 1995.  Patents issuing from applications filed prior to that date had a term of the longer of 17 years from issuance or 20 years from earliest filing; patents issuing from applications filed after that date had a term of 20 years from earliest filing only.  An enormous spike in filings occurred leading up to that date.  A similar or even greater spike can be expected in the time leading up to March 2013.  This can only further contribute to the PTO’s backlog.

Senate to Take Up House Patent Reform Bill After August Recess

August 3, 2011

Now that Congress has finally resolved the crisis over the debt ceiling, it’s time for them to go on their annual month-long vacation.  When they return, they plan to take up the House patent reform bill first.  From the sound of it, they plan to simply vote on the problem-filled bill passed by the House in June.

Senate Majority Leader Harry Reid (D-NV) planned to file cloture on the bill on Tuesday, thereby permitting floor action when the Senate reconvenes on September 6.  This would seem to limit debate on the measure and only permit consideration of the House bill.

Meanwhile, President Obama also continues to push for passage.

Through patent reform, we can cut the red tape that stops too many inventors and entrepreneurs from quickly turning new ideas into thriving businesses—which holds our whole economy back.

Sen. Reid and Sen. Patrick Leahy (D-VT) said the patent reform bill will create 200,000 jobs.  I’d love to see where that number comes from.


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