Eye On IP®: September 2011

Wednesday, September 28, 2011

AMERICA INVENTS ACT - MORE CHANGES

We continue to report on the America Invents Act with regard to changes that take effect now. These include:

1. It is no longer possible to obtain a patent directed to a human organism. The intent of the provision is to prevent patenting humans. However, it remains to be seen how the courts interpret this. For example, if a new drug cures diseases, is it directed to a human organism? It is unlikely to be held that way, but the exact scope of this provision is uncertain.

2. It is no longer possible to patent any tax strategy for reducing, avoiding, or deferring tax liability.

3. The standard for the Patent Office to grant inter partes (at least two parties involved) reexamination has been tightened. The person requesting reexamination needs to show “that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request.” The prior standard was a showing of a “substantial new question of patentability.”

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Tuesday, September 27, 2011

AMERICA INVENTS ACT - EFFECTS ON FEES

President Obama on Friday, September 16, 2011 signed the America Invents Act. Only a few of the provisions of the act are effective immediately. Certain of these provisions affect fees. As previously reported, a 15% fee increase is effective on September 26, 2011.

Microentities

There will be a 75% reduction in fees for a new category of patent applicants, namely “microentities.” It is unclear whether that reduction will actually take place immediately, because the Patent Office may need to issue rules as to who and what qualifies as a “microentity.”

Non-Electronic Filing

There will be an additional $400 fee, reduced by 50% for small entities, that will apply to applications not electronically filed. This will take effect on November 15, 2011. Therefore if someone is not filing electronically, the application should be filed prior to November 15, 2011.

Stay tuned for additional comments on this Act.

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Monday, September 19, 2011

Correction to Eye On IP Blog Published August 29th

Trademark owners need to take note, and possibly take affirmative action, concerning the sunrise phase of sTLD "dot triple x" or ".xxx". This sTLD's sunrise phase, during which .xxx domains are being sold or blocked, runs until October 28, 2011. After the sunrise phase closes, such action becomes more difficult. This domain is a voluntary option for online adult entertainment sites, and is being operated by ICM Registry LLC.

The .xxx sunrise phase has two sections: One is open to members of the adult entertainment community ("Sunrise A"), and the other is open to trademark owners not in this industry ("Sunrise B"). There are fees associated with both Sunrise A and B.

If you qualify as a member of the adult entertainment community, you can add a .xxx domain to your trademark through Sunrise A upon fee payment, verification and qualification. If you are not a member of the adult entertainment community, and want to block your trademark from being registered as a ".xxx" domain, you can do so through Sunrise B upon fee payment.

Details of this new sTLD and the sunrise registration/blocking period may be found at the site, www.icmregistry.com.

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Thursday, September 15, 2011

AMERICA INVENTS ACT – 15% PATENT FEE INCREASE BUT FEE DIVERSION REMAINS

This is the first blog in a series that will cover several important changes in the newly passed Patent Act. Both a summary and the full text of the Act are available at http://www.govtrack.us/congress/bill.xpd?bill=h112-1249.

After the Act is signed by President Obama, one change that will take effect almost immediately is an increase in fees of 15%. These fees will cover only certain types of filings, and the regulations are subject to change. Your patent attorney can give you the details of the current fee structure.

Unfortunately, a provision in the original act that would have prevented Congress from raiding revenue generated by Patent Office user fees was defeated, and so is not included in the final bill to be signed. While, in theory the fee diversion is supposed to stop, unfortunately fee diversion remains subject to the whims of federal politicians. Unless fee diversion stops, we cannot expect the Patent Office to get caught up with their gigantic backlog of pending patent applications.

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Wednesday, September 14, 2011

THE AMERICA INVENTS ACT – INITIAL REPORT

Patent reform is (almost) here: The America Invents Act is scheduled to be signed into law by President Obama this Friday, September 16th. Both a summary and the full text of the Act is available at http://www.govtrack.us/congress/bill.xpd?bill=h112-1249.

Important provisions of the Act:

(i) a modified first to file system;

(ii) a 15% increase in fees (effective immediately);

(iii) changes to the law as to whether patents are invalid or unenforceable for failing to disclose the “best mode” of practicing the claimed invention;

(iv) new administrative avenues for challenging grant of a patent;

(v) patent marking requirements and false marking claims; and

(vi) post patent grant review.

Stay tuned for a discussion of those subjects and the potential impact of these changes for patent owners, inventors, and those subject to suit for patent infringement.

We will be reporting the changes made by this law in a series of blogs.

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