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Leahy-Smith America Invents Act – One Year Anniversary (September 16, 2012).

Posted in Practice Commentary by Jake Ward on September 15, 2012

The one year anniversary of the Leahy-Smith America Invents Act (AIA) is September 16, 2012.  As most practitioners know, the AIA represents the first major overhaul of U.S. patent law in approximately 60 years.  The AIA has also been implemented in stages, with the one year anniversary representing the next stage of implementation.

Most notable are the following changes to U.S. patent law that will take place on September 16, 2012:

• Inventor’s Oath/Assignment by Assignee – If an inventor has assigned (or is obligated to assign) an invention, the assignee can file the application for the patent if the inventor is unavailable or unwilling to sign.  Also, the requirements for the oath or declaration by the inventor(s) have been streamlined.
• Pre-issuance Submissions By Third Parties – A third party may submit relevant publications for the patent examiner to consider before the earlier of (a) the date the notice of allowance is mailed to an applicant, or (b) the later of (1) six months after the date on which the application for patent is first published or (2) the date of the first substantive office action during the examination of an application.
• Supplemental Examination – Patentee may request supplemental exam “to consider, reconsider, and correct information believed to be relevant to the patent”; must raise “a substantial new question of patentability”.
• New Patent Trial and Appeal Board (PTAB)

 Established to handle appeals in the patent process, post grant review (PGR), inter partes review (IPR), and derivation actions.
 Replaces Board of Patent Appeals and Interferences (BPAI).
 PGR oppositions available for 9 months after issuance of patent.  Only available for patents having an effective filing date (earliest priority date) on or after March 16, 2013.
 PGR Standard – it is “more likely than not” that at least one of the claims challenged is unpatentable.
 IPR and existing ex parte reexaminations available after post-grant review period ends.
 IPR Standard – a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.
 Transitional Post-Grant Review of Business Method Patents.
 8-year window of time beginning 1 year after the enactment.

Leahy-Smith America Invents Act Signed by President Obama on September 16, 2011.

Posted in Practice Commentary by Jake Ward on September 17, 2011

On September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act (AIA), discuss earlier at AT! here.  The AIA is the first major overhaul of the U.S. patent laws in approximately 60 years.

More information on the new U.S. patent laws, which will be implemented gradually over the next 1-1/2 years, may be found at the U.S. Patent and Trademark Office website here.

Senate Approves the America Invents Act of 2011 (H.R. 1249).

Posted in Practice Commentary by Jake Ward on September 8, 2011

The Senate has voted and passed the America Invents Act of 2011 (H.R. 1249) without amendment.  We are one step closer to having a new “law of the land”, as Senator Leahy termed it, with respect to patents in the United States.  H.R. 1249 will now be delivered to the President’s desk, where the America Invents Act of 2011 will be signed into law.

U.S. Senate to Vote Soon on America Invents Act of 2011.

Posted in General Commentary by Jake Ward on September 6, 2011

Earlier today, the U.S. Senate voted 93-5 to end debate on the America Invents Act of 2011.  A vote by the Senate to adopt the H.R. 1249 bill, which was recently approved by the U.S. House of Representatives, is now imminent.  If the Senate adopts the House bill wholesale, which they appear posed to do, the bill would then go to President Obama’s desk for signing.

See further coverage on this topic at the PatentlyO and IPWatchdog blogs.

One thing is clear – change is coming.

USPTO Fee Changes – Effective January 1, 2014.

Posted in Practice Commentary by Jake Ward on January 8, 2014

Pursuant to the Fee Setting Authority granted to the USPTO by the Leahy-Smith America Invents Act, certain fee changes were implemented on January 1, 2014.

Patent Post-Allowance Fees

  • 1501/2501/3501: Utility issue fee – fee decrease from $1,780/$890/$445 to $960/$480/$240.
  • 1511/2511/3511: Reissue issue fee – fee decrease from $1,780/$890/$445 to $960/$480/$240.
  • 1502/2502/3502: Design issue fee – fee decrease from $1,020/$510/$255 to $560/$280/$140.
  • 1503/2503/3503: Plant issue fee – fee decrease from $1,400/$700/$350 to $760/$380/$190.
  • 1504: Publication fee for early, voluntary, or normal publication – fee decrease from $300 to $0.

PCT Fees – International Stage

  • 2601/3601: Transmittal fee – new small/micro entity fee of $120/$60.
  • 2602/3602: Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) – new small/micro entity fee of $1,040/$520.
  • 2604/3604: Supplemental search fee when required, per additional invention – new small/micro entity fee of $1,040/$520.
  • 2621/3621: Transmitting application to Intl. Bureau to act as receiving office – new small/micro entity fee of $120/$60.
  • 2605/3605: Preliminary examination fee – U.S. was the ISA – new small/micro entity fee of $300/$150.
  • 1606: Preliminary examination fee – U.S. was not the ISA – fee increase from $750 to $760.
  • 2606/3606: Preliminary examination fee – U.S. was not the ISA – new small/micro entity fee of $380/$190.
  • 2607/3607: Supplemental examination fee per additional invention – new small/micro entity fee of $300/$150.
  • 2619/3619: Late payment fee – new small/micro entity fee of variable.

Patent Service Fees

  • 8021: Recording each patent assignment, agreement or other paper, per property – if submitted electronically – fee decrease from $40 to $0.(If not submitted electronically, the fee amount remains $40.)

According to this Federal Register Notice, these fee reductions were made to help rebalance the fee structure and offset the increases in filing, search and examination fees that were implemented in 2013.  Interestingly, the USPTO acknowledged that they intentionally delayed the implementation of these fee reductions in order “to allow the Office to recover sufficient revenue to pay for the projected cost of patent operations” in 2013.

The updated fee schedule may be viewed here: http://www.uspto.gov/curr_fees.

The New Reality – First-Inventor-To-File in United States Patent Law.

Posted in Practice Commentary by Jake Ward on March 16, 2013

JW Note: Now that we have finally rested after the marathon of pre-AIA patent application filings the past few weeks, thought it worthwhile to mention the new legal landscape, in regards to what it takes for an invention to be “novel” under 35 U.S.C. §102 of the patent law.

35 U.S.C. §102 (Leahy-Smith America Invents Act, commonly known as the “AIA”)

(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) Exceptions.—

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed 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 in applying the provisions of subsection (b)(2)(C) if—

(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

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

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

(d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

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Excellent commentary on the newly implemented patent laws are available at the IPWatchdog blog here.

USPTO Publishes Final Rules On First-Inventor-to-File.

Posted in Practice Commentary by Jake Ward on February 13, 2013

Press release 13-10 from the U.S. Patent and Trademark Office.

 USPTO Publishes Final Rules and Guidelines Governing First-Inventor-to-File

Actions Complete Implementation of America Invents Act Rules

Washington— The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents Act (AIA).  The provision, one of the hallmarks of the AIA, is a major step towards harmonization of the U.S. patent system with those of the United States’ major trading partners, allowing greater consistency in the prosecution and enforcement of U.S. patents. The AIA also includes safeguards to ensure that only an original inventor or his assignee may be awarded a patent under the first-inventor-to-file system. The first-inventor-to-file provision of the AIA goes into effect on March 16, 2013, and represents the final implementation of the changes mandated by the AIA.

The USPTO also today published final examination guidelines setting forth the agency’s interpretation of how the first-inventor-to-file provision alters novelty and obviousness determinations for an invention claimed in a patent application.  In particular, the agency’s final examination guidelines inform the public and patent examiners how the AIA’s changes to the novelty provisions of law alter the scope of what is prior art to a claimed invention and how the new grace period operates.

“Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries,” said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea.
Prior to the passage of the AIA, the USPTO was the only national patent office using a “first-to-invent” system. First-inventor-to-file complements USPTO’s existing efforts toward greater harmonization with foreign counterparts. One result of these efforts is the Cooperative Patent Classification system launched on January 1st of this year, a common classification system that will enhance the examination capabilities of both the USPTO and the European Patent Office. Another such effort is USPTO’s ongoing coordination with the world’s largest patent offices–the so-called Tegernsee Group dialogues. The USPTO currently is seeking comment on these initiatives.

The AIA authorizes derivation proceedings before the USPTO, which will ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent.  The AIA also creates a one-year grace period, which will ensure that the patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures. The new micro-entity (75%) discounts for patent applicants also make it more affordable than ever for independent inventors to seek patents.
The USPTO will provide more information on the first-inventor-to-file final rules and examination guidelines at a public training session to be held on Friday March 8, 2013 at the USPTO’s headquarters in Alexandria, Virginia.  The training session will be webcast.  Details on webcast access will be available on the AIA micro-site at www.uspto.gov/AmericaInventsAct.

The Federal Register publication – Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act – can be found at http://federalregister.gov/a/2013-03453 and the Federal Register publication – Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines – can be found at http://federalregister.gov/a/2013-03450.

The public may contact the AIA Helpline at 1-855-HELP-AIA (1-855-435-7242) or the AIA Email at HELPAIA@uspto.gov for answers to first-inventor-to-file and other AIA related questions.

U.S. Commerce Department to Open Four Regional U.S. Patent Offices.

Posted in General Commentary by Jake Ward on July 2, 2012

Via a press release this morning from the U.S. Patent and Trademark Office.

U.S. Commerce Department to Open Four Regional U.S. Patent Offices That Will Speed Up the Patent Process and Help American Businesses Innovate, Grow, and Create Jobs

For the First Time, USPTO Will Expand Operations Outside Washington, DC, to Dallas, Denver, and Silicon Valley, in Addition to Detroit, Which Opens July 13

WASHINGTON – Acting U.S. Commerce Secretary Rebecca Blank and Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) David Kappos today announced plans to open regional USPTO offices in or around Dallas, Texas, Denver, Colorado, and Silicon Valley, California. These offices are in addition to the already-announced first USPTO satellite office to open on July 13 in Detroit, Michigan. The four offices will function as hubs of innovation and creativity, helping protect and foster American innovation in the global marketplace, helping businesses cut through red tape, and creating new economic opportunities in each of the local communities. Next week, Acting Secretary Blank and Under Secretary Kappos will travel to each of the newly selected cities to meet with local businesses, entrepreneurs and public officials to discuss the new office openings.

“Intellectual property protection and innovation are engines of economic growth and the bedrock of America’s private sector,” said Acting U.S. Commerce Secretary Rebecca Blank. “The Obama administration is committed to making certain our businesses and entrepreneurs have the resources they need to grow, create jobs and compete globally. These new offices are an historic step toward further advancing our world’s best IP system, and reinforcing the United States as the number one destination for innovation capital, and research and development around the world.”

The offices announced today will help the USPTO attract talented IP experts throughout the country who will work closely with entrepreneurs to process patent applications, reduce the backlog of unexamined patents, and speed up the overall process, allowing businesses to move their innovation to market more quickly, and giving them more room to create new jobs.

“By expanding our operation outside of the Washington metropolitan area for the first time in our agency’s 200-plus year history, we are taking unprecedented steps to recruit a diverse range of talented technical experts, creating new opportunities across the American workforce,” said David Kappos, Director of the USPTO. “These efforts, in conjunction with our ongoing implementation of the America Invents Act, are improving the effectiveness of our IP system, and breathing new life into the innovation ecosystem.”

Patents are a significant factor in private sector job creation. In fact, the U.S. Commerce Department issued a recent report finding that IP-intensive industries are the source – directly or indirectly – of 40 million jobs, contributing $5.06 trillion to the U.S. economy in 2010.

Selection of the four sites was based upon a comprehensive analysis of criteria including geographical diversity, regional economic impact, ability to recruit and retain employees, and the ability to engage the intellectual property community. The Leahy-Smith America Invents Act of 2011 (AIA), signed into law by President Obama in September, requires the USPTO to establish regional satellite locations as part of a larger effort to modernize the U.S. patent system over the next three years.

Since the passage of the AIA, the USPTO and the Department of Commerce have been committed to an open, robust, and fair site selection process based on extensive public input. In addition to reviewing over 600 public comments in response to a public Federal Register Notice, USPTO officials met with hundreds of state and local officials, congressional delegations, and policy leaders, as requested. The selection team developed a model to evaluate over 50 Metropolitan Statistical Areas based on the previously stated criteria to assess operational cost and feasibility, ability to improve patent quality, and ability to employ U.S. veterans.

The USPTO is working to develop concept of operations for the three newly-announced locations based on the Elijah J. McCoy Detroit Office and will develop best practices based on this model over the coming months and years. The Detroit office will employ approximately 120 individuals in its first year of operations. The USPTO also seeks to identify and maximize the unique regional strengths of all four offices to further reduce the backlog of patent applications and appeals.

The USPTO team plans to begin site procurement activity and establish a timeline for the three newly-announced locations in the coming months.

For additional background on the selection criteria and methodology, please click here.

For non-press inquiries pertaining to the satellite site selection, please contact Azam Khan, USPTO deputy chief of staff at azam.khan@uspto.gov.