Status Report Austin Intellectual Property Law Assoc. August 16, 2011

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Presentation transcript:

Status Report Austin Intellectual Property Law Assoc. August 16, 2011 Patent Reform 2011 Status Report Austin Intellectual Property Law Assoc. August 16, 2011 Brian W. Oaks brian.oaks@bakerbotts.com

Recap S. 23 approved by the Senate and H.R. 1249 approved by House Key Provisions First to file (and associated prior art changes) Prior user rights/defense (all patents) Post Grant and Inter Partes Review End of PTO fee diversion (sort of) False marking reform

Current Status of Legislation Ball is in Senate's court, but delayed due to debt fight Senate cloture vote on Sept. 6; vote expected later that week House bill expected to be brought and passed without amendment in Senate It's now a "jobs bill" and both sides want to show progress

Timeline for Implementation Immediate Changes Change in reexam standard of review (reasonable likelihood requester will prevail) False marking reform (must have competitive injury; marking expired patent is OK) Virtual marking allowed (via web site marked on product) Elimination of best mode as basis for invalidity Prohibition on patenting of human organisms Prioritized examination (Track 1) 15% increase in almost all fees and addition of micro entity status (75% reduction in fees)

Timeline for Implementation Delayed Changes First to file (18 months) Third party pre-issuance submissions (1 year) Supplemental examination (1 year) Post Grant Review (1 year) Inter Partes Review (1 year) Special review for business method patents (1 year)

PTO Request for Comments USPTO is asking for comments related to rule-making required by expected new law See: USTPO site > Patents > Initiatives and Events > Leahy-Smith America Invents Action Implementation