On 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.
Archive for the ‘Patent Reform Legislation’ Category
On February 14, 2013, the PTO published extensive Examination Guidelines for examination of applications filed after March 16, 2013, under 102 and 103 as amended by the AIA. Given the debates, if not confusion, that arose following the publication of the proposed rules with public comments regarding certain provisions of 102, these guidelines should provide some clarity as we prepare to go “out of the gate” after March 16th. Pay particular attention to the last section, which discusses “transition applications.” Happy Valentine’s Day!
While this is primarily a biotechnology patent law blog, the USPTO’s high level of rule making activity deserves attention, as it will affect us all after the September 16th deadline for implementing many of the new features of the AIA passes. Today, the PTO publishes over two hundred pages of regulations, guidelines and “Rules of Practice’ regarding Inter Partes Review, Post-Grant Review, the Transitional Program [to attack] Business Method Patents, Supplemental Examination (to “purge inequitable conduct”) and the new procedures by which a person having rights to the invention can file an application in lieu of the inventor(s).
Below are links to the six USPTO Federal Register Notices –
On July 17th, the USPTO released the rules that will govern the mandate in Section 8 of the AIA that requires the Office to provide for the submission by third parties of patents, published patent applications and other materials that qualify as a “printed publications” to be considered by the Examiner in pending applications. 77 Fed. Reg. 42150 (July 17, 2012). (A copy is found at the end of this post.)
What I initially thought would be one of the less complicated group of rules still required 17 pages of three-column text to explain. The timing provisions are quite generous; submissions must be before the earlier of the mailing date of the notice of allowance or the later of six months after publication or the date of first rejection. The first three items can be submitted without a fee, then it will be $180 per group of ten. The Rules go into effect September 16, 2012 and are retroactive. However, two major areas stood out, both of which may frustrate Examiners, rather than speed the examination process.