America Invents Act: Friday Five Look at Patent Law Reform

For your reference, five legal updates to help you understand the pending America Invents Act patent reform legislation. Friday Five: what you need to know, from leading law firms on JD Supra»

1. The debate’s not over yet: “The House version of patent reform … contains a number of provisions that differ from S. 23 [the Senate version of the bill], including an altered funding mechanism for the Patent Office (Section 22), clarification of the prior user rights provision (Section 5), and a formal ban on inventions relating to human organisms.” (From Patent Reform Escapes the House, Back to the Senate by Morrison & Foerster LLP)

2. But it is drawing to a close: “The cloture vote, which would end debate in the Senate, is scheduled for September 6, 2011. If the cloture vote passes, the Senate would then vote on adopting H.R. 1249, in lieu of S. 23. If the Senate approves the House version of the legislation, the President would have the opportunity to sign the legislation.” (From IP Update – Patent Law Reform 2011 – August 31, 2011 by Finnegan)

3. “First-to-file” means speed is everything: “This change creates more of a race to the U.S. Patent Office by granting rights to the first person to file regardless of who may have first conceived the invention. This change may be problematic to individual inventors and smaller businesses that don’t have the time and financial resources or manpower to initiate the patent process as quickly as larger entities.” (From The Amazing Race to the Patent Office: New law will replace first-to-invent with first-to-file By Len Brignac | King, Krebs & Jurgens, PLLC)

4. Strategy is important too: “In competitive technology fields this move puts additional pressure on companies to quickly make critical patent strategy decisions about how to protect newly-conceived inventions. Among the most important are decisions about how best to balance the need for winning the race to the patent office with completing the work required in a patent specification.” (From First to File in the Unpredictable Arts: Change in Law Requires Balancing of Competing Interests by Fenwick & West LLP)

5. The effects go far beyond filing: “With both post-grant review and inter partes review, the burden of proof on the challenger would be to demonstrate that the claims are invalid by a preponderance of the evidence, and the challenger would be precluded from raising similar grounds in an action for infringement in Federal Court.” (From Patent Reform Is Imminent – House Passes Historic Patent Reform Bill by Bracewell & Giuliani LLP)

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See: Full text copy of America Invents Act – Patent Reform Bill

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