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Update On U.S. Patent Reform

Now that the holidays are over and the U.S. Congress has headed back to work, it is a good time to review what is happening with U.S. patent reform. The Goodlatte Innovation Act passed the House in December, so attention now turns to the Senate, where the Leahy Patent Transparency and Improvement Act may be the vehicle that moves the current round of U.S. patent reform to the next stage. 

The Goodlatte Innovation Act

I wrote about the Goodlatte Innovation Act shortly after it was introduced in the House in October 2013. Although there were some changes between the original bill and the final bill, the primary focus of the Innovation Act remains to curb “abusive patent litigation.” [...]

The Innovation Act Would Bring More U.S. Patent Reform

On October 23, 2014, U.S. Congressman Goodlatte (R-VA) introduced the “Innovation Act,” which is intended “to make improvements and technical corrections” to the Leahy-Smith America Invents Act (AIA) “and for other purposes.” The bulk of the Act focuses on patent litigation, but it also includes significant changes to the new patent trial proceedings (inter partes review, post-grant review, and covered business method patent review), and several miscellaneous substantive changes to other aspects of U.S. patent law. A hearing before the House Judiciary Committee is scheduled for Tuesday, October 29, 2013. Although patent reform has been a bipartisan effort, it is not clear whet [...]

Technical Amendments To The America Invents Act Could Mean More Patent Term For U.S. National Phase Applications

The first set of “technical corrections” to the Leahy-Smith America Invents Act (AIA) was enacted on January 14, 2013. While this legislation did make “technical” corrections to some of the new AIA provisions, it also made substantive changes to both the AIA and other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) statute. This article provides an overview of the substantive changes to the AIA embodied in this law.

Technical Corrections To The AIA

The law at issue stemmed from HR 6621, is titled “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” and also is referred to as the “Technical Corrections Act.”

Changes Relating [...]

An Update On U.S. Patent Reform

In two months, the U.S. patent system will begin its transition from the current “first to invent” system to a new “first-inventor-to-file” system. Inventors and applicants should be considering whether patent applications that may be ready for filing should be filed before or after the March 16, 2013 effective date of the U.S. first-to-file laws.  This article provides a non-comprehensive, big picture review of the changes that take effect on March 16, 2013, and discusses other changes to the America Invents Act recently passed by Congress.

Which patent applications will be governed by the first-to-file laws?

  • Applications that present even a single claim that has an effective filing date [...]
Submitting Publications In U.S. Patent Applications

As of September 16, 2012, third parties have been able to make “Preissuance Submissions” of printed publications in pending U.S. patent applications. To date, the USPTO has received just over 100 Preissuance Submissions. This article looks at important timing and disclosure requirements that parties considering making such submissions should keep in mind when deciding whether to take advantage of this new program.

The Statutory And Regulatory Framework

Section 8 of the America Invents Act amended 35 USC § 122 to provide for Preissuance Submissions. The USPTO’s implementing regulations are found in new 37 CFR § 1.290 and revised 37 CFR § 1.291. Key requirements and related st [...]

New U.S. Patent Office Trials To Challenge U.S. Patents

On September 16, 2012, inter partes review proceedings became available against U.S. patents and post-grant review proceedings became available against certain U.S. business method patents. In two weeks, seventeen petitions for inter partes review have been filed and eight petitions for post-grant review have been filed. This article takes a brief look at these new proceedings.

Inter Partes Review

While similar in principle to inter partes reexamination (which is no longer available), inter partes review is different in many significant respects. Like inter partes reexamination, inter partes review offers a way to challenge a granted U.S. patent based on print publications in a [...]

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