Posts in Legislation

Stakeholders Speak: Leahy Bill to ‘Restore the AIA’ is Too Unbalanced to Pass

Last night, Senators Patrick Leahy (D-VT) and John Cornyn (R-TX) released the text of the “Restoring America Invents Act”, which is meant to “support American innovation and reduce litigation,” according to the headline of the senators’ joint statement on the legislation. Many in the patent community, however, are not as optimistic. As reported previously, the bill would essentially end discretionary denial practice under precedential Patent Trial and Appeal Board (PTAB) cases such as Apple Inc. v. Fintiv, Inc. and limit denial to petitions where “the same or substantially the same prior art or arguments previously were presented to the Office,” among other changes. Here is what a handful of stakeholders who have had a chance to review the bill had to say so far.

The ‘Restoring America Invents Act’ Would Open the Floodgates for Patent Owner Harassment

The much discussed, but previously unreleased, Restoring America Invents Act has finally been made public. The bill was submitted by Senator Patrick Leahy (D-VT) in what he described late last week as an attempt to reverse the reforms of the Patent Trial and Appeal Board (PTAB) made by former USPTO Director Andrei Iancu. Leahy promised to take aim at discretionary denials of inter partes review (IPR) and post grant review (PGR) challenges, which he did, among many other things.

The United States Must Step Up Its Support for R&D, Education

History is often defined by its most important technology, giving us eras such as the Bronze Age and the Industrial Revolution. Given their importance, the modern era may go down as the Semiconductor Age. But unless the United States begins making needed investments in this and other key technologies, the future may wind up being the Age of China. It is hard to overstate the importance of semiconductors. The most sophisticated of these computer chips help to control computers, airplanes, and even modern weapons systems. Less sophisticated versions are still critical components of our daily lives and power automobiles, TVs and home appliances. From an economic and national security standpoint, controlling our supply of semiconductors should be essential. Yet, U.S. companies have spent decades outsourcing and consolidating the manufacturing of this essential technology to other countries.         

Looming Leahy Bill Would End Fintiv Practice at PTAB

IPWatchdog has obtained a draft summary of the “Restoring the America Invents Act” bill that Senate IP Subcommittee Chair, Senator Patrick Leahy (D-VT), is purportedly expected to introduce shortly. Several other outlets have reported that either Leahy himself or sources on the Hill confirmed such a bill is in the works and will address discretionary denial practice at the Patent Trial and Appeal Board (PTAB) under the PTAB’s precedential Apple Inc. v. Fintiv, Inc. decision, which sets out a list of factors that the Board will evaluate in deciding whether to discretionarily deny instituting a petition due to parallel district court litigation. The draft explains that the bill would require the USPTO to institute a proceeding if it meets the statutory standards, “with discretion to deny institution based on statutory considerations, so only one action goes forward at once.”

Senators Tear into Facebook and Google Reps During ‘Big Data, Big Questions’ Hearing on Competition and Privacy

The Senate Judiciary Committee’s Subcommittee on Competition Policy, Antitrust, and Consumer Rights held a hearing yesterday titled “Big Data, Big Questions: Implications for Competition and Consumers,” in which both Republican and Democratic senators pushed representatives of Facebook and Google to answer difficult questions about their platforms’ impact on everything from competitive marketplaces to teenagers’ body image. The hearing is one in a series that aims to conduct a bipartisan review of America’s competition issues, according to Subcommittee Chair, Amy Klobuchar (D-MN).

New Tillis-Leahy Bills to Boost Innovation: The Good, the Bad and the Nonsense

Earlier today, U.S. Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the Ranking Member and Chair of the Senate Intellectual Property Subcommittee, introduced a pair of bipartisan bills that the Senators say are aimed at improving the participation Americans from all backgrounds in the patent system and ensuring that the public knows the true owners of patents. If enacted, the Unleashing American Innovators Act (UAIA) would require the Director of the United States Patent and Trademark Office (USPTO) to establish another satellite office within three years somewhere in the Southeastern region of the nation, which the bill specifically defines as Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas. Of course, given that the main campus of the USPTO is located in Alexandria, Virginia, it would seem unlikely that Virginia would be the final destination of any Southeast Region satellite office. The UAIA would also require the Director to determine within two years whether any additional regional satellite offices are necessary to— in the words of the bill— “achieve the purposes described in section 24 23(b) of the Leahy-Smith America Invents Act… and increase participation in the patent system by women, people of color, veterans, individual inventors, or members of any other demographic, geographic, or economic group that the Director may determine to be underrepresented in patent filings.”

A Kinder, Gentler ‘Death Squad’: Ten Years in, Despite Some Reforms, the USPTO is Still Killing U.S. Patents

Now that the 10th anniversary of the America Invents Act (AIA) has passed, we can look back not only at the past decade, but also the reactions of various interested parties and how they responded to that anniversary. There were two revolutionary amendments to U.S. patent laws enacted on September 16, 2011; one relating to the U.S. changing from first-to-invent to first-to-file, the other relating to the creation of the Patent Trial and Appeal Board (PTAB) and three new procedural mechanisms to invalidate issued patents. While from a philosophical and practical point of view, the change from first-to-invent to first-to-file had the largest impact on patent practice, it has essentially become a footnote in patent history. Yes, the United States had a bizarre system that allowed the second filer in some instances (i.e., the first to invent) to obtain a patent over the first-to-file, but that almost never happened. And now, the United States has a strange, hybrid first-to-file system that still theoretically allows the first-to-invent to prevail in even rarer circumstances, but that change became easily baked into the system, because overwhelmingly, the first-to-invent did file first. The real story of the change to first-to-file is that much more is now prior art, including foreign filed applications as of their foreign filing date, typically, which continues the theme of the last 15+ years of making it harder to obtain and keep patent rights in the United States.

Celebrating (?) the America Invents Act: Ten Years On, Many IP Stakeholders Say it’s Time for a Second Look

During IPWatchdog LIVE 2021 in Dallas, Texas, I asked a handful of willing attendees for their thoughts on the impact of the America Invents Act (AIA) in anticipation of today, the ten-year anniversary of the day President Barack Obama signed the AIA into law. I began writing for Managing IP magazine in 2007 and remember well the lead-up to the law. The discussion centered mostly on the change from a first-inventor-to-invent to a first-inventor-to-file system, which was seen as a way to harmonize the United States with the rest of the world, but which many feared would be detrimental to U.S. innovation. Some of the most controversial provisions were ultimately dropped in order to get the law through Congress, and overall, the IP world was celebrating on September 16, 2011, that at least some action had been taken on reforming, and ostensibly strengthening, the U.S. patent laws.

Ten Years of the America Invents Act: Toward a More Objective and Accurate Patent System

When the America Invents Act (AIA) was before Congress a decade ago, it was heralded as the first comprehensive patent law since the 1952 Act. Ten years’ perspective on the new law, however, shows that its changes to patent policy have been more evolution rather than revolution. The AIA is simply the latest step in the long arc of moving U.S. law toward a more objective and logical patent system—and one that produces more accurate results.

IPWatchdog LIVE Event Wraps Up with Featured Speakers Makan Delrahim and Vishal Amin

On day three of IPWatchdog LIVE in Dallas, Texas, former Assistant Attorney General in charge of the Antitrust Division at the U.S. Department of Justice (DOJ), Makan Delrahim, who is now a Member of the Board of the Directors at Osiris Acquisition Corporation and a Lecturer in Law at the University of Pennsylvania, told attendees of the event that it’s unfortunate that antitrust [and its interaction with intellectual property rights] has become a partisan issue when “it doesn’t need to be.” Delrahim recalled during a Luncheon Fireside Chat with IPWatchdog Founder and CEO Gene Quinn that, 20 years ago, when he was detailed to the Office of the U.S. Trade Representative (USTR), “the approach to strong IP was a unifying issue, and something that was not questioned, nor its value.” He added that he has become a bit discouraged by the “echo chamber” that has been created about IP to “devalue its actual impact on economics and on society”—particularly when our trading partners, like China, have realigned to recognize the value.

Iancu, Kilbride, Israel Separate Fact from Fiction During IPWatchdog LIVE Panel on TRIPS IP Waiver

On Monday of IPWatchdog LIVE in Dallas, a panel on “The TRIPS IP Waiver: Separating Fact & Fiction” was moderated by president and CEO of the PCT learning center and founding partner of Berenato & White, John White, and featured IP leaders Andrei Iancu, Patrick Kilbride, and Chris Israel. The Trade Related Aspects of Intellectual Property (TRIPS) agreement is an international agreement among members of the World Trade Organization (WTO), which sets minimum standards in the international rules governing intellectual property. In 2020, India and South Africa proposed a TRIPS Agreement waiver proposal that would temporarily waive intellectual property rights protections for technologies needed to prevent, contain, or treat COVID-19, including vaccines and vaccine-related products. The proposal has been hotly contested globally, but the Biden Administration said in May of this year that the United States would back it.

USPTO and Copyright Office Reports Attempt to Quantify Extent and Effect of IP Infringement by State Entities

On August 31, at the request of Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the United States Patent and Trademark Office (USTPO) provided a report to Congress analyzing infringement disputes between patent and trademark rights holders and states and state entities. The U.S. Copyright Office produced a similar, much lengthier report, also in response to a letter from Tillis and Leahy, studying whether there is sufficient basis for federal legislation abrogating State sovereign immunity when States infringe copyrights. The Senators’ letters were prompted by the March 2020 Allen v. Cooper Supreme Court decision. While the USPTO report came to no conclusions, the Copyright Office found that “the evidence indicates that state infringement constitutes a legitimate concern for copyright owners.”

A Pandemic Can’t Stop Bayh-Dole—But Politicians Might

What would you say about a technology commercialization system that kept on performing even through the worst pandemic in over a century? How about if it improved its performance over the previous year and was a critical factor in developing desperately needed therapies to protect people around the world? Would it seem reasonable that this was something that all of us should highly value and want to protect? You might think so, but some in Washington apparently don’t agree.

Ninth Circuit Reverses Win for the Turtles’ Rights Owners Under California Law on Copyright for Public Performance

The U.S. Court of Appeals for the Ninth Circuit on Monday ruled that California common law on copyright protection does not include a right of public performance, reversing a partial summary judgment for Flo & Eddie, which controls the rights to the songs of the rock band the Turtles. The case began in 2013, when Flo & Eddie sued Sirius XM Radio, Inc. for playing the Turtles’ iconic pre-1972 recordings, such as “Happy Together” and “Elenore.” While AM/FM radio stations do not pay public performance royalties to sound recording owners, digital and satellite radio providers like Sirius XM must pay public performance royalties whenever they broadcast post-1972 music.

Note to Congress: Resist Big Tech Pleas to Weaken Strong Patents in Light of Recent Losses

In recent days, both Google and Apple have lost big patent cases. On August 13, Apple lost a $300 million jury verdict to PanOptis. Also on August 13, Google was found to infringe five Sonos patents at the International Trade Commission (ITC) in an initial determination by Judge Charles E. Bullock, which, if upheld by the full Commission, would block the importation of Google hardware, including Chromecast and Pixels. This likely means that Apple, Google and their big tech allies will use these instances, as well as other recent high-profile patent losses, as evidence of the need for yet more innovation-crippling patent reform. That would be a huge mistake for America at a time when we find ourselves locked in a race for technological supremacy with the Chinese.


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