Wednesday, September 14, 2011

What companies should worry about from changes produced by HR 1249

For the company that wants to challenge an issued patent, HR 1249 brings some major changes. Although the low profile "ex parte" re-examination stays the same, procedures above ex parte but short of litigation change. Inter partes re-exam will be phased out AND the standard for succeeding in a request for inter partes goes up: as of the date of enactment the current standard requiring a requestor to show a “substantial new question of patentability” [SNQ] is replaced by a new standard requiring a requestor to show “that there is a reasonable likelihood that the requestor would prevail with respect to at least 1 of the claims challenged in the request.” Inter Partes reexamination in the Central Reexamination Unit will be replaced by review proceedings before the renamed Patent Trial and Appeal Board. Any ground of invalidity can be raised in a Post Grant Review petition, filed within 9 months of patent issue or reissue. Invalidity on grounds of prior patents and publications can be raised in an Inter Partes Review at any time when Post Grant Review is not available.

Courtenay Brinckerhoff gives some advice about HR 1249 as to first-to-file:

First-To-File—effective 18 months after the date of enactment and applicable to any application with an effective filing date on or after that date.
To the extent that the first-to-file provisions eliminate or curtail the current one year grace period afforded by 35 USC § 102(b), this means that companies have at most 6 months to educate their inventors about the elimination of the grace period and the importance of filing a patent application before making any public disclosure of the invention, and to develop and implement appropriate safeguards against pre-filing disclosures.

And the new derivation procedure requires companies to monitor what is going on:

A derivation proceeding can be brought by a later applicant who alleges that an inventor named in an earlier application derived the invention for an inventor named in the later application. A petition must be filed within one year (or 364 days?) of the first publication of a relevant claim, and must be supported by substantial evidence. This means that applicants concerned about derivation should have procedures in place to monitor the claims of newly published applications.

Other commentary on HR 1249:

From Fish & Richardson: Patent Law Changes Appear Imminent

From Brookings: The Comprehensive Patent Reform of 2011: Navigating the Leahy-Smith America Invents Act

**from patentdocs

Strafford will be offering a webinar entitled "USPTO Post-Grant Proceedings After New Patent Reform Law" on September 28, 2011 from 1:00 - 2:30 PM (EDT). Scott McKeown of Oblon Spivak McClelland Maier & Neustadt and Kevin Laurence of Stoel Rives will provide guidance for counsel to IP owners and inventors on the new America Invents Act's post-grant system, including post-grant review proceedings, special transitional post-grant review of business method patents and supplemental examinations. The webinar will review the following questions:

• What are the grounds for post-grant challenges now?
• How will current reexamination practice change?
• What are the new options, how will they be implemented, and when?
• How do the changes of the Leahy-Smith America Invents Act alter the strategic use of post grant proceedings parallel to litigation?
• What are the relevant deadlines and best practices?

An interactive Q&A session will follow the presentation.

The registration fee for the webinar is $297 ($362 for registration and CLE processing). Those interested in registering for the webinar, can do so here.


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