Posts Tagged: "America Invents Act"

The recurring theme will be decreased fees for those who qualify for micro-entity status, but increased fees for everyone else. That is great, but micro-entity status will not even apply to all independent inventors, but only a subset of independent inventors who are at the lowest end of the income scale and who have had very few patents or patent applications. Thus, even the professional garage inventor will be a small entity and will pay more — in some cases substantially more — than they pay now. Not to mention the small businesses that are the engine of the U.S. economy. These fees will be a real and substantial impediment to the patent process for those individuals and businesses that we need to be encouraging and incentivizing the most.

The proposed fees are at least 22 percent lower for a routine patent process—i.e., filing, search, examination, publication, and issue fees—than the current fee schedule. The current proposed fees also are lower than those originally proposed by the USPTO in February. The USPTO is opening a 60-day comment period in which the public can provide input on the latest proposal. Following the comment period, the Office will prepare the final fee-setting rule, which would go into effect no less than 45 days after it is published in the Federal Register.

Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos will participate in both events, joined by several senior USPTO officials. An in-person roundtable addressing the upcoming shift to a first-inventor-to-file system will be held Thursday, Sept. 6, from 1:30 to 4:30 p.m. at the USPTO headquarters in Alexandria, Va. It is open to the public and will be webcast. A separate webinar will be held Sept. 7 from 12:30 to 1:30 p.m. to discuss all aspects of the AIA.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on August 14, 2012, to implement three administrative trial provisions of the Leahy-Smith America Invents Act (AIA); inter partes review, post-grant review, and the transitional program for covered business method patents. The administrative trial final rules offer a third party a timely, cost-effective alternative to district court litigation for challenging the patentability of a claimed invention in an issued patent. These rules become effective on September 16, 2012. With this publication, all of the administrative trial rules the USPTO was tasked by the AIA to complete will have been published.

For the international community, however, there is an important change slated for September 16, 2012.  The AIA will changewho is entitled to be an applicant in U.S. national applications. This change will impact applicants who have filed under the Patent Cooperation Treaty (PCT).  The change removes the requirement that the inventors be named as applicants solely for the purposes of U.S. designation.

The United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on Tuesday, July 31, 2012, that relate to the statute of limitations provisions for disciplinary actions brought by the Office of Enrollment and Discipline (OED) at the USPTO. Subsection (e) is added to clarify that the one year period for filing a complaint may be tolled by a written agreement between the involved practitioner and the OED Director. The Office agrees that tolling agreements may provide both the Office and the practitioner with additional time to resolve matters without a complaint.

For well over a year I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Disclosures of third-parties who independently arrived at the invention will be used against the inventor. Now that the USPTO has come out with examination guidelines we find out the truth. I was right all along.

This new final rule eliminates 37 CFR 1.99, which provided for third-party submissions of patents, published patent applications, or printed publications in published patent applications, but did not permit an accompanying concise description of the relevance of each submitted document and limited the time period for such submissions to up to two months after the date of the patent application publication or the mailing of a notice of allowance, whichever is earlier.

Earlier today David Kappos, the Director of the USPTO, testified before the Senate Judiciary Committee at the Senate’s first oversight hearing of the America Invents Act. Among other things, Director Kappos noted that the USPTO continues to move forward on AIA implementation, saying that the much anticipated new rules packages to implement the next round of AIA changes will be released on or before August 16, 2012. Kappos also revealed that the USPTO received over 600 comments relative to the location of the additional Satellite Patent Offices called for in the AIA. Kappos told the Senators that he expects to complete that review process and announce the next Satellite location something this summer. Kappos also discussed patent harmonization, Track One, the Patent Prosecution Highway, the new pro bono program and more.

The amend to the rules of practice in patent cases is for the purpose of implementing the micro entity provision of the Leahy-Smith America Invents Act (AIA). If an applicant qualifies as a micro entity, then the applicant is eligible to pay reduced patent fees once the USPTO exercises its fee setting authority under the AIA. The fee setting provision in the AIA sets the micro entity discount at 75% of the fees set or adjusted for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.

Attendees agreed that it’s critical for companies to gain greater leverage to deter nuisance lawsuits and manage costs by reducing the cost of litigation defense. According to those surveyed this is accomplished, at least in part, through the use of joint defense groups (JDGs), where parties engage in shared co-counsel to reduce defense costs. JDGs have been used in approximately two-thirds of all NPE cases, and three-quarters of those surveyed reported working in some capacity with JDGs.

Section 273 uses language that is untested in the court system. Clarity with respect to statutory construction is especially important to those who wish to take advantage of a prior use but will only later find out when tested during litigation that their use does not qualify under the statute. As argued by Sen. Roy Blunt, “assurances are all the more important for U.S. companies in the biotechnology field with extraordinarily long lead times for commercialization of its products.” [2] Therefore the scope of protection and reliance upon the defense is concerning to those who might enjoy this defense which may lead to a detrimental reliance on the part of those would be prior users.

How this will philosophically change things remains unclear because the America Invents Act requires that the petition filed to institute a derivation proceeding demonstrate that the claimed invention in the subject application or patent was derived from an inventor named in the petitioner’s application without authorization. The Patent Office has also recognized the similarity between derivation proceedings and interference practice, saying: “Petitions to institute derivation proceedings, while distinct from interference practice, raise similar issues to those that may be raised in interferences in a motion for judgment on priority of invention. Currently, motions for judgment on priority of invention, including issues such as conception, corroboration…” See 77 Fed. Reg. 7035 (10 February 2012).

Ray Niro is a nationally recognized trial attorney specializing in the enforcement of patent, trade secret and related intellectual property rights. The name Niro, however, is not like any other in the patent industry. It was as a consequence of a lawsuit one of his clients brought against Intel in 2001 that the term “patent troll” was coined. On March 12, 2012, Niro went on the record with me in an exclusive interview. We discussed many things, including the nearly constant attempts to erode patent rights, make it more difficult for patent owners to seek redress for infringement and what the America Invents Act will mean for patent litigation moving forward. We also discussed the undeniable reality that there are bad actors in the industry.

Prior user rights also implicate free rider problems with respect to a subsequent patent that an inventor obtains covering the subject matter of the secret prior user. At the point of publication the prior user no longer maintains a trade secret. At the point of issuance, the patentee and the prior user relatively co-exist with each other in the market. The patentee excludes others from the market except for the prior user. The prior user then enjoys the benefits and advantages associated with the patentee excluding others from operating in the market, while being free from liability to the patentee. In this regard, the prior user enjoys the period of time operating the technology in secret in addition to 20 years of excluding others provided by the competitor.