Archive for the ‘Patent Reform Legislation’ Category

Takeaways from Chisum Patent Academy’s 2016 Seminars

Tuesday, August 16th, 2016

A guest post from Chisum Patent Academy.

On August 4-5 and 8-9, 2016 the Chisum Patent Academy held two advanced patent law roundtable seminars at the historic Mayflower Park Hotel in Seattle, Washington. In addition to covering recent “blockbuster” court decisions, our primary focus was “The Brave New World of IPR.” We emphasized repeatedly that the law and procedure of inter partes review is a moving target. The Federal Circuit reaffirmed that on Friday, August 12, when it granted rehearing en banc in one of the IPR claim amendment cases analyzed during our seminar, In re Aqua Products, 823 F.3d 1369 (Fed. Cir. May 25, 2016).

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PTO Announces Requirements for Expedited Appeals for Small Entities

Wednesday, September 16th, 2015

gavel3For some years, I have complained that the lack of a timely appeal process to the Board (“PTAB”) effectively removes the appeal process as a prosecution tool. The average pendency of an appeal to the Board from a rejection arising in Group 1600 is presently 32.5 months. That is a long time for a small entity like a University or a start-up to go without a patent. I personally do not feel that the pre-appeal conference helps much, since the brief is reviewed by the Examiner and two other PTO personnel, with no opportunity for the attorney or the applicant(s) to participate. As a result, the backlog at the USPTO is, as Donald Trump would say, “HUGE.”  (more…)

Innovation Act Stalls in the House

Friday, July 17th, 2015

iStock_000001499158_SmallRepresentative Goodlatte’s Innovation Act (H.R. 9) has been shelved for now, and will not receive a floor vote until September at the earlier. There is significant conflict between measures intended to deter patent trolls and the ability of non-profit institutional NPE’s to enforce their patents. Big Pharma wants “out” of IPR entirely.  Action on the corresponding Senate Bill,  S. 1137, will also be postponed.

A 3-page chart comparing major provisions of the bill with IPO positions is available on the IPO website. 

Universities Response to Patent “Reform” Legislation

Friday, February 27th, 2015

iStock_000015456314_Small copyOn February 24th, a letter sent by the Association of American Universities, signed by 145 universities, to Senators Grassley and Leahy and Representatives Goodlatte and Conyers, objected to parts of legislation such as “The Innovation Act, H.R. 9” that purports to deter litigation by non-practicing entities, such as patent “trolls.” The Universities emphasized the damage that fee-shifting provisions requiring the loser of an infringement suit to pay the winner’s costs and fees would do to educational and research institutions that already find it financially difficult to enforce their IP rights. The letter pointed out the chilling effect such provisions would have on attempts to license technology, especially to start-ups. Also noted was the fact that mandatory joinder provisions could draw a university and its inventors into litigation initiated by third parties over which the university has little control.