Posts Tagged: "America Invents Act"

There have been a number of inquiries from the public regarding the fees due when payments are made by postal mail just prior to the effective date of the 15 percent surcharge (September 26, 2011). The fee due is the fee in effect on the date the document is timely filed. At this time the USPTO may not offer the micro entity discount (75%) on any fees. As provided for in the Leahy-Smith America Invents Act (Public Law 112-29) these fees will be adjusted under the fee setting authority provided for in Section 10 of the AIA.

It isn’t exactly a newflash to announce that Washington, D.C. is dsyfunctional, anyone paying attention over the past few years has long since come to that conclusion. Thus, it is hardly breaking news to report that Congress is on the verge of passing a Continuing Resolution rather than actually doing their job and passing a budget for fiscal year 2012. Why do today what is required of you to fulfill the responsibilities of your job when you can just kick the can down the road? Of course, by so doing Congress will embark upon a path that will divert some $600 million from the USPTO during FY 2012.

For example, the new provision retains the existing notion of “public use” and “on sale” under current law; however, a key difference is that the one year grace period of current law will not be available under new 102 (Another key difference is that activities outside the United States may create a so-called public use or on sale bar under new 102). The new grace period under the America Invents Act is personal to the inventor and relates to “disclosure,” which many believe could be interpreted not to cover “public use” or “sale” as those terms are presently understood. Therefore, there is a possibility that your client’s invention may already be unpatentable in the United States by the time he or she contacts you (such as if a “public use” or “offer for sale” even took place the day before he or she consults you).

On Friday, September 16, 2011, President Obama signed into law “The America Invents Act” (“AIA”) which passed the Senate on September 8, 2011, by a vote of 89-9. The AIA passed the House of Representatives on June 23rd by a vote of 304-117. The measure, which is the product of a seven-years-long legislative battle among patent policy stakeholders, changes how patents are obtained and enforced in the United States. Important reforms to patent law are incorporated into the AIA and, just as significantly, several controversial proposed changes were deleted from the AIA before final passage. This article is a play-by-play of the process and how it unfolded.

The economics of mass patent enforcement have changed. A patent owner will no longer be able to casually sue a multitude of parties with a single filing, participate in proceedings in a single action in a single venue likely convenient only for the plaintiff, and thereby expeditiously pursue a recovery against numerous disparate parties. Actions will have to be filed individually against each accused infringer. The patent owner will have to participate in, contend with and address procedural and substantive aspects of each action.

President Obama started by commending the students of what he called “One of the best high schools in the country.” He mentioned that; “We have an exhibit of some of the projects that you guys are doing, including the fist high school student satellite, a wheel chair controlled by brain waves, robotics and more. He made the crowd smile when he jokingly said; “I am hoping that I will learn something just by being close to you; through osmosis. I already feel smart just standing here.”

Those rushing to pay fees before September 26, 2011, will save 15%, but the Patent Office will not have access to that money. The budgetary calendar resets on October 1, 2011, which marks the start of Fiscal Year 2012. While the America Invents Act does not put an end to fee diversion key Congressmen in the House of Representatives pledged that they would allow the USPTO to keep 100% of the user fees collected. Thus, presumably, fees paid starting October 1, 2011, would go to the USPTO to use for the purpose intended by the payor; namely the examination of applications and ongoing business operations of the agency.

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,…

So the point is that there is the language of the bill, and then there is what we were told was in the bill, which actually isn’t what is in the bill if you are reading the plain meaning. In the coming days President Obama will sign the bill and then the Courts will embark on the long journey to decipher the text and tell us what it means. All the while the USPTO will be proposing and then enacting new rules. Patent law, practice and procedure is in a state of flux to say the least.

It looks like my prediction on Tuesday that the Senate would pass H.R. 1249, the America Invents Act, prior to President Obama’s much anticipated jobs and economy speech that begins at 7:00pm ET today, Thursday, September 8, 2011. The Senate voted to pass H.R. 1249 and send the House version of the America Invents Act to the White House for President Obama’s signature by a vote of 89 to 9. The Coburn Amendment, which would have once and for all put an end to fee diversion, was unsuccessful, being tabled by a vote of 50 to 48.

The United States Senate voted 93 to 5 earlier this evening to end debate on patent reform, which should set up a vote on H.R. 1249 in the coming days. Debate on patent reform is now over in the Senate. In the coming days the Senate will vote on and almost certainly pass H.R. 1249, sending it to the White House for the signature of President Obama. The Obama Administration has lobbied hard for this patent reform and although they are not getting everything they wanted, most notably an end to the practice of fee diversion, President Obama’s signature is guaranteed.

Why would we expect a new post-issuance review to work any better than the current prosecution process? Why are we to expect the Patent Office, which is certainly not equipped to handle litigation-like proceedings, could adequately and appropriately resolve issues of patentability in a post grant review proceeding when they are so horribly under-funded? Why would anyone think this is a good idea? Simply stated, the America Invents Act layers on more and more responsibility for the USPTO but without any additional funding. For years the federal government has been notoriously adept at layering unfunded mandates onto the States, but with this legislation they will layer unfunded mandates onto the USPTO; an agency that accepts absolutely no taxpayer funding.

Now, we’re about to toss it out in favor of a “first to file” bent with post grant challenges and derivation proceedings? Say what…….why? What did the statute do wrong? 8 million patents is a reasonable figure to have achieved. The US is the cross roads of the world’s technology with a statutory “negative pressure” that draws innovators and their ideas here. This country has flourished.

That being the case it seems likely to me that patent reform won’t be picked up in the Senate until after Labor Day in September. What does this mean for patent reform? Who knows! I personally cannot see the Senate capitulating to the demands of the House of Representatives, and Senator Tom Coburn (R-OK) has already fired a shot across the bow prior to the House voting on H.R. 1249 suggesting he plans to make a big deal about USPTO funding, which was stripped from H.R. 1249. If the Senate does not accept H.R. 1249 and instead modifies the bill that would mean it would have to go back to the House. We might get into a game of ping-pong because I am told there will be no Conference on this legislation.

Small businesses are the backbone of the nation’s economy and those that are most likely to engage in job creation. Unfortunately, the small businesses surveyed tell a tale of little or no job creation over the next 1 to 3 years, and in fact suggest there will be more layoffs coming. The respondents see too much uncertainty in Washington, DC, too many regulations and a number of other matters (i.e., the deficit, debt, health care and taxes) as significant impediments to job creation. This on the heels of a disappointing jobs report for June 2010, downward revisions of the number of jobs created in April and May, and unemployment rising to 9.2%, this Chamber survey only piles on the continuing terrible news for the economy. With Congress bickering over the obvious — namely that we simply cannot spend money we don’t have and need to start spending less than we bring in to cut the deficit — it doesn’t seem there is likely to be any good news on the horizon.