By Michael Stein A new pilot program, the Collaborative Search and Examination (CS&E) under the Patent Cooperation Treaty began effective July 1, 2018, with the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIP), collectively known at the IP5 offices, participating in the program. Instead of other similar pilot programs, applicants will select international patent applications to be handled under the CS&E. A first, only international applications filed in English will be accepted. After some time, international authorities that work in languages other than English will begin to accept patent applications in those other languages into the pilot program. Under the pilot program, an examiner of the IP5 office selected as the International Search Authority (ISA) will perform a search and examination, to generate a provisional international search report and written opinion. Examiners
By Dennis Clarke and James McEwen On September 16, 2011, the “Leahy-Smith America Invents Act” (AIA) was signed into law. The AIA makes the most substantial changes in U.S. patent law in decades and sets various dates on which these changes are to take effect. The most profound of those changes is the switch to a first-inventor-to-file system, in place of the current first-to-invent practice in the U.S. This change takes effect only for applications originally filed on or after March 16, 2013. However, on September 16. 2012, other major changes will take effect, including the possibility of requesting inter partes review and other post-grant trial procedures before the newly renamed “Patent Trial and Appeal BoarcL” This paper will predominantly relate to the new requirements relating to declarations and assignments and other miscellaneous provisions that have an effective date of September 16, 2012. The new trial proceedings are discussed briefly hereinbelow.
Charles Pierce and James G. McEwen On July 25, 2012, the United States Patent and Trademark Office (USPTO) announced proposed rules as a result of changes in the America Invents Act (AIA) converting the U.S. patent system from a first to invent to a first to file system. These changes will take place on March 16, 2013. The proposed rules are intended to promote consistency caused by the changes in the AIA for pending applications, and to implement the AIA for future applications. Comments on the proposed rules are open until October 5, 2012. Below is a summary of significant elements of the proposed rules. The proposed rules will treat commonly owned or joint research agreement patents and patent application publications as having the same inventive entity for the purposes of 35 U.S.C. §§ 102 and 103 as required under 35 U.S.C. § 102(c) of the AIA. 35 U.S.C. §102(c) of the AIA essentially broadens the current 35 U.S.C. §§
James G. McEwen* Introduction In the article included in the Stein McEwen Newsletter entitled Overview of the Leahy-Smith America Invents Act: What Is The Practical Effect of First-to-File for Patent Applicants (October 2011), the novelty portions of the American Invents Act were explored. However, as the America Invents Act was the result of pressures from diverse industries and groups, not all changes revolved directly around first to file issues. Specifically, in view of the high costs of litigation, there was pressure from electronics companies to reduce the uncertainties of litigation by clarifying the law in regards to willful infringement and inequitable conduct, eliminating “secret” prior art, and retaining the prior user defense. Additional issues included ensuring patent quality and reducing pendency by increasing third party participation in the issuance of patents, and increasing funding for the United States Patent and Trademark Office so that more examiners could be hired to deal with the increased number of patent applications being filed.
James G. McEwen* Introduction The American Invents Act is a result of pressures from diverse industries and groups. From international companies and academics, there has been a desire to have the U.S. conform to international standards, and specifically, to switch from its first-to-invent system to a first-to-file system. Furthermore, in view of the high costs of litigation, there was pressure from electronics companies to reduce the uncertainties of litigation by clarifying the law in regards to willful infringement and inequitable conduct, eliminating “secret” prior art, and retaining the prior user defense. There were conflicting pressures from the electronics and pharmaceutical industries in relation to making changes to various types of damages deemed excessive, such as treble damages for willful infringement, as well as mechanisms for making equitable factors play a greater role in determining whether to enjoin infringement. Additional issues related to perceived abuses of venue, as well as ensuring patent quality and reducing pendency by enhancing the obviousness standard
President Barack Obama has just signed into law on Friday, September 16, 2011, the America Invents Act. A number of provisions take effect immediately, while others will become effective over time. Of more immediate concern, the America Invents Act will increase fees automatically on September 26, 2011. Specifically, The America Invents Act imposes a 15% surcharge on most fees (see Summary below), which takes effect after 10 days and lasts until the Director of the USPTO sets his own fees. Thus, consider filing any documents with the USPTO before September 26, 2011 to avoid the 15% surcharge, and preferably by September 23 as September 26 is a Monday. Such fees include, but not limited to the filing or payment of: a. new utility or provisional or PCT patent applications; b. extensions of time; c. Notices of Appeal and appeals; d. issue fees; and e. maintenance fees. Other provisions that are effective immediately relate to defenses of infringement based
By Thad Cox and James McEwen Ever since June 8, 2005, Representative Lamar Smith, then Chairman of the House Subcommittee on Courts, the Internet, and Intellectual Property, along with several co-sponsors, have attempted to change the U.S. patent system. In 2005, this was through introduction of H.R. 2795. Popularly known as the “Patent Reform Act of 2005 ,” the Patent Reform Act was an omnibus bill which overhauled multiple aspects of patent practice. While this act aroused a significant amount of interest, it ultimately failed as lawmakers were unable to reconcile numerous competing interests. Similar efforts failed in each successive legislative session. However, with the Patent Reform Act of 2011, (H.R.1249) as introduced by Rep. Smith (R-TX) on March 30, 2011, the first significant change to the United States patent system has arrived. Since renamed the Leahy-Smith America Invents Act was passed by the U.S. House of Representatives on June 23, 2011, and by the U.S. Senate on September 8,
By Grant Gildehaus and James G. McEwen Ever since June 8, 2005, Representative Lamar Smith, then Chairman of the House Subcommittee on Courts, the Internet, and Intellectual Property, along with several co-sponsors, have attempted to change the U.S. patent system. In 2005, this was through introduction of H.R. 2795. Popularly known as the “Patent Reform Act of 2005 ,” the Patent Reform Act was an omnibus bill which overhauled multiple aspects of patent practice. While this act aroused a significant amount of interest, it ultimately failed as lawmakers were unable to reconcile numerous competing interests. Similar efforts failed in each successive legislative session. However, with the Patent Reform Act of 2011, (H.R.1249) as introduced by Rep. Smith (R-TX) on March 30, 2011, there is a very real chance that these changes could be implemented in the near future. . As such, this article provides an overview of the significant provisions of the Patent Reform Act.
By Fadi N. Kiblawi Introduction Though various forms of patent reform legislation have been unsuccessfully introduced in Congress over the past five years, Democratic and Republican leaders have recently presented a new Patent Reform Act of 2009. The Senate Bill (S.515) and the House bill (H.R.1260) respectively introduced by Senators Leahy (D-VT) and Hatch (R-UT) and Representatives Conyers (D-MI) and Smith (R-TX), include many of the same provisions as years past (2005 and 2007), including the controversial limitations on damages for infringement. However, some less divisive provisions are omitted in the 2009 version, including stipulations on inequitable conduct and requirements that all applications be published in 18 months and prior art searches be conducted by Applicants (i.e., Applicant Quality Submissions). The following is an overview of the more serious changes proposed in the 2009 Act. First Inventor to File Section 3 of the House bill and Section 2 of the Senate bill propose a transition from a “first-to-invent” to a