Where We Stand On Patent Reform

27 June 2012 PharmaPatents Blog

It has been nine months since President Obama signed the Leahy-Smith America Invents Act into law on September 16, 2011. In just under three months, the next phase of changes will take effect on September 16, 2012, and in just under nine months, the final phase of changes will take effect on March 16, 2013. Have you taken any steps to get ready yet?

Changes Already In Effect

The following changes took effect on September 16, 2011 or shortly thereafter:

  • Track I prioritized examination available for a fee of $4800/$2400 for new applications or RCEs.
    (For more information on the Track I programs, see this article.)
  • Ban On Tax Strategy Patents—effective September 16, 2011 and applicable to pending applications.
  • Ban On Patents To A Human Organism—effective September 16, 2011 and applicable to pending applications.
  • Change of Inter Partes Reexamination standard—effective September 16, 2011 and applicable to any requests for inter partes reexamination filed on or after that date, the standard for inter partes reexamination changed from “substantial new question of patentability” to “a reasonable likelihood that the requestor would prevail” with respect to at least one of the challenged claims.
  • Appeal of Board decisions in ex parte reexamination to Federal Circuit only—effective September 16, 2011 and applicable to any pending or subsequent Board appeal.
  • Changes to requirements for standing to bring False Marking cases and marking requirements—effective September 16, 2011 and applicable to pending proceedings.
  • Limitations on joinder of defendants in infringement actions—effective September 16, 2011 and applicable to all actions commenced on or after that date.
  • Changes to Prior Use Defense—effective September 16, 2011 as applied to any patent issued on or after that date.
  • Best Mode violation no longer a basis for invalidating a patent—effective September 16, 2011 and applicable to proceedings commenced on or after the effective date.

Changes Taking Effect September 16, 2012

  • Preissuance Third Party Prior Art Submissions—applicable to any pending application but limited by timing requirements.
    (For more information on the proposed rules for this change, see this article.)
  • New Supplemental Examination procedures for patent holders—applicable to any patent issued before, on or after September 16, 2012. (For more information on the proposed rules for this change, see this article.)
  • New Inter Partes Review procedures will replace Inter Partes Reexamination—applicable to any patent issued before, on or after September 16, 2012. (For a discussion of some of the more problematic proposed rules for the new USPTO patent trial proceedings, see this article.)
  • Transitional Post-Grant Review procedures for Business Method Patents—applicable to any covered business method patent issued before, on, or after September 16, 2012.
  • Filing By Assignee—applicable to any application filed on or after September 16, 2012 (apparently without regard to priority date). (For more information on the initial proposed rules for this change, see this article.)
  • Elimination of requirement for no “deceptive intent” to correct various errors—applicable to all proceedings commenced on or after September 16, 2012.

Changes Taking Effect March 16, 2013

  • First-To-File—applicable to any application with any claim with an effective filing date on or after March 16, 2012.
    (For more information on the effective date/applicability of the first-to-file provisions, see this article. For a discussion of some of the implications of the first-to-file provisions, see this article.)
  • Derivation Proceedings—applicable to any application with any claim with an effective filing date on or after March 16, 2012.
  • New Post-Grant Review procedures (based on any ground for challenging validity)— applicable to patents encompassed by the first-to-file provisions.

The USPTO’s proposed rules to implement the first-to-file changes should be published within the next few weeks (e.g., June/July 2012).

More Roadshows To Help You Get Ready

The USPTO has announced another set of “roadshows” to be held during September 2012 in Minneapolis, Alexandria, Los Angeles, Denver, Detroit, Atlanta, Houston, and New York City. The USPTO will “share information about new final rules implementing provisions of the America Invents Act that become effective on September 16, 2012,” including “provisions for inventor’s oath/declaration, preissuance submissions, citation of patent owner statements, supplemental examination, inter partes review, post grant review, and covered business method review.” The final rules will be published in the Federal Register by August 16, 2012. (For more information, see the USPTO’s  patent reform implementation website.)

For additional updates on patent reform, including updates relevant to other industries, please visit Foley & Lardner LLP’s Patent Reform webpage.

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